Trademark Distinctiveness

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Trademark Distinctiveness

Trademark distinctiveness is not something most applying for trademarks consider.  Apart from likelihood of confusion issues however, the level of trademark distinctiveness will likely be key on whether a trademark application will be approved.

A company could engage in commercial use for a decade, but if a trademark is not distinctive, the U.S. Patent and Trademark Office (USPTO) will not grant full registration.  In addition to being a requirement for registering a trademark, distinctiveness will also directly affect a brand’s ability to repel infringers.

What is Trademark Distinctiveness?

When a trademark is capable of distinguishing a company’s goods or services from those of competitors, it’s said to be distinctive.

There are many levels of distinctiveness, and distinctiveness will dictate a trademark’s continuing validity and enforceability after registration is complete. Highly distinctive brand identifiers are considered strong trademarks, and this will typically result in the registration process going much smoother. Unauthorized use will also be easier to identify and respond to.

There are various ways you can ensure your trademark is distinctive from others:

  • Create a unique term or design: Completely novel identifiers are the strongest trademarks. No other brand could ever claim, for instance, that their commercial use of “Kodak®” isn’t infringing.
  • Choose an unused identifier: Even if a trademark isn’t inherently strong, continued and exclusive use can make it distinctive. If your identifier can’t be original, at least make it uncommon.
  • Avoid potential confusion: Even if your brand name is original, it may not be considered distinctive if it could easily be confused with a preexisting registration.
  • Avoid descriptive terms: It is very difficult to establish rights over any descriptive identifier.
  • Don’t use generic terms: Generic trademarks can never be considered distinctive. You’ll garner no federal rights over these identifiers.
  • Don’t use surnames: Surnames are not considered distinctive on their own.
  • Avoid numbers and acronyms: It can be difficult to prove that identifiers containing numbers or acronyms are distinctive. Focus more on choosing a truly unique trademark.

In most cases, failing to meet distinctiveness guidelines will result in non-registrability. Those who file a trademark application without meeting this requirement will waste time and forfeit their application fee. If you have already begun use, you may have to completely rebrand your company.

Trademark Spectrum of Distinctiveness

In 1976, a federal appeals court decided an infringement case that established the concept of a trademark spectrum of distinctiveness. Sometimes also referred to as “Abercrombie factors” or “Abercrombie classification,” these classes distinguish the strength of a given brand identifier and thus the level of protection it receives under the law.

Courts hearing trademark infringement cases will consider the following classes. These are presented in order ranging from more distinctive to less distinctive.

Fanciful Trademarks

The strongest protection afforded to brand identifiers comes from fanciful trademarks. These are completely new terms created by a company solely to act as a trademark. They are prima facie registrable since they’re considered inherently distinctive. Common examples include Kodak®, Exxon®, Polaroid® and Pepsi®. None of these terms were listed in dictionaries prior to their commercial use as trademarks.

Arbitrary Trademarks

Even if a term or design existed previously, it may still be considered distinctive if it qualifies as an arbitrary trademark. This means the identifier is being used in a way that is not related to the product or service. These are also prima facie registrable since other companies are unlikely to use similar names or designs.

To qualify as arbitrary, there can be no connection between the identifier and the represented products/services. Common examples include Apple®, Dove®, Sonic®, Shell® and Domino’s®. Even though each of these words existed prior to the brand in question, none of them are related to what’s offered (e.g. “apples” for computers and “dove” for soap are arbitrary connections).

Suggestive Trademarks

Brand identifiers that suggest a quality of a product or service – without blatantly describing it – are known as suggestive trademarks. The relation between the identifier and characteristic described should not be immediately obvious – it must require a bit of imagination on the consumer’s part. Consider the following examples:

  • Airbus® (commercial aircraft manufacturer)
  • Jaguar® (manufactures fast cars)
  • Netflix® (offers films – or “flicks” – on the net)
  • Greyhound® (offers fast transportation)

Each of these brand identifiers suggests a characteristic of a product or service (e.g. greyhounds and jaguars are both fast). The average consumer, though, would have to use their imagination to identify the referenced characteristics.

Descriptive Trademarks

Brand identifiers that directly reference a characteristic of the product or service are known as descriptive trademarks. An ice cream shop named “Cold and Creamy” would fall under this category. These do not typically meet the requirement of trademark distinctiveness, but a few companies (i.e. British Airways®, American Airlines®) have managed to overcome this issue.

Generic Trademarks

Rather than describing a characteristic of a product or service, a generic identifier simply names the product/service in question. Examples would include using “Blue Jeans,” “Hotdogs,” “Auto,” or other general terms to represent companies that operate within those industries.

Not all generic trademarks started out that way. It’s possible for a fanciful brand identifier to lose its distinctiveness over time and experience genericide. This occurs when consumers begin using a unique trademark to describe an entire category of goods or services causing a loss of trademark rights. Examples include escalator, hovercraft, laundromat, trampoline and dry ice.

Inherently Distinctive

While fanciful, arbitrary and suggestive trademarks all convey differing levels of protection, each still qualifies as being inherently distinctive. Inherent distinctiveness means that a term is able to identify and distinguish a brand’s products/services from those of others. When Kodak® released its initial product, for instance, consumers immediately knew the name was a source indicator.

It’s not necessary for a brand identifier to be completely unique to be inherently distinctive. Consumers who hear the term Wrangler® Jeans, for instance, recognize that “wrangler” is used as a brand rather than a descriptive term for jeans. If a trademark includes words or symbols that are obviously related to the product or service in question, the likelihood that the identifier is inherently distinctive decreases.

Generic and descriptive trademarks cannot be inherently distinctive. Both are also likely to run into  likelihood of confusion issues with other trademarks.

Trademark Distinctiveness and Acquired Distinctiveness

The fact that American Airlines® and British Airwaves® are famous trademarks shows that trademarks don’t necessarily need to be inherently distinctive to end up being very good trademarks. If a brand is able to establish a secondary meaning in the minds of consumers, they will have acquired distinctiveness. Even descriptive trademarks can gain distinctive status if they become recognized as source indicators.

It’s also possible for surnames to acquire trademark distinctiveness. One well-known example is McDonald’s®. While attaining secondary meaning in the minds of consumers earned the brand certain rights, it wouldn’t stop others from using a similar brand identifier in unrelated industries. Trademark owners can offer the following evidence to the USPTO to prove acquired distinctiveness:

  • Prior registrations: If one or more prior and active registrations exist on the Principal Register for the same brand identifier, this can be used as evidence that the property has already established secondary meaning in the minds of consumers.
  • Continuous use: Brand owners who can show five years of continuous and exclusive use of an trademark can offer this as proof of acquired distinctiveness. It’s likely, however, that additional evidence will be requested by the examiner.
  • Advertising expenses: Evidence that shows extensive advertising and promotional expenses on the part of the brand could also serve as proof of secondary meaning in consumers’ minds.
  • Media coverage: Consumer perception is often conveyed through the media, so any coverage from the press may constitute evidence that distinctiveness has been acquired.
  • Declarations: Consumer and industry opinions are what matter in acquired trademark distinctiveness. Declarations from field insiders or consumers will be considered by USPTO examiners.
  • Other proof: Any evidence that shows secondary meaning has been established will be reviewed.

If your trademark has yet to acquire distinctiveness, you can still take steps to protect it. The USPTO allows descriptive trademarks to be registered on the Supplemental Register. This is the secondary federal database for descriptive trademarks.  A supplemental registration does not convey the same rights as the Principal Register, but it does offer basic protection.

Placement on the Supplemental Register can serve as a stopgap until a brand acquires trademark distinctiveness. A trademark renewal must be filed after five years of registration, and this coincides with the requirement of five continuous years of use in establishing secondary meaning. Trademarks owners interested in moving from the supplemental register to the principal register should file the principal register application in advance of the five year renewal for the supplemental registration.  If the principal registration is approved, the supplemental registration can then be abandoned prior to paying for the renewal.

Even if your trademark doesn’t acquire trademark distinctiveness, placement on the Supplemental Register conveys the following benefits:

How to Claim Acquired Distinctiveness

Since any claim of acquired trademark distinctiveness must go through the USPTO registration process, you’ll have to deal with an examining trademark attorney. With your brand identifier not qualifying as inherently distinctive, it’s likely that you’ll receive an Office Action. At this point, you can claim acquired distinctiveness under Section 2(f).

Potential Issues with Trademark Distinctiveness

Trademarks that aren’t distinctive are more likely to run into infringement issues.  As such, you may find yourself dealing with trademark cease and desist letters, or trademark oppositions or cancellations.

On the other hand, establishing recognition among the public for fanciful or arbitrary trademarks can be a difficult endeavor. Since consumers have no basis for associating these identifiers with a specific product or service, it can take extensive marketing to create this mental connection. Challenges are also likely to arise related to social media and search engine optimization.

Because of these potential issues, choosing a suggestive trademarks may be the sweet spot for your business.  A suggestive trademark can help you strike a good balance that accounts for both marketing considerations and legal considerations.

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