The Five Levels of Distinctiveness
When selecting a trademark, businesses must consider both inherent and acquired distinctiveness. The five levels, from weakest to strongest, are:
- Generic (e.g., “soap” for soap products)
- Descriptive (e.g., “McDonald’s” – originally just a surname)
- Suggestive (e.g., “Dunkin’ Donuts”)
- Arbitrary (e.g., “Apple” for computers)
- Fanciful (e.g., “Xerox,” “Google,” “Exxon”)
Making Descriptive Marks Registrable
Descriptive marks initially start weak and may only qualify for the supplemental register. To become registrable on the principal register, these marks must acquire distinctiveness through extensive advertising, recognition, and use over time. The principal register provides stronger protection, including a presumption of ownership.
Trademark Examination Process
Trademark examiners focus on inherent distinctiveness during initial review. Marks lacking inherent distinctiveness may face rejection or placement on the supplemental register for five years. While acquired distinctiveness can be argued, the initial examination emphasizes inherent strength.
Secondary Meaning and Acquired Distinctiveness
Secondary meaning develops when descriptive marks gain recognition through extensive use. For example, “Best Buy” started as a descriptive term but acquired distinctiveness through widespread recognition. Proving secondary meaning requires evidence of advertising expenditure, website traffic, and sales volumes.
Conducting Trademark Searches
Professional trademark searches go beyond simple database queries. A comprehensive search includes:
- Initial “knockout” searches on USPTO.gov
- Analysis of phonetic equivalents
- Investigation of abandoned marks
- Understanding rejection histories
Timing and Brand Identity
Selecting and protecting your trademark should be one of the first steps in establishing a business. The name should align with your brand’s personality while maintaining distinctiveness. Professional legal guidance early in the process can prevent costly conflicts and rebranding later.
Preventive Measures
Early trademark registration serves as both a shield and sword for business protection. The cost of proper trademark registration is minimal compared to potential litigation expenses and forced rebranding. Professional guidance can help avoid federal cases and ensure long-term brand protection.
