Levels of Trademark Distinctiveness

Trademark Distinctiveness

When you file an application with the US Patent and Trademark Office (USPTO) to register a word or phrase as a trademark (or the literal segment of a mixed mark), there are several elements of the mark that the examiner will take into account during their examination. These include the likelihood of confusion with existing trademarks, the class(es) of goods or services that the trademark will cover, and the distinctiveness category of the mark that is submitted. By distinctiveness, I mean the ability of a proposed trademark to identify the source of the good or service to the consumer. The more distinct a mark is, the higher its chances of becoming registered (barring confusion with an existing mark or a statutory bar to protection).

When discussing distinctiveness, there are 4 categories that proposed marks (or certain terms within those marks) will fall into: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary/fanciful.

Generic — a generic term is a common name for the kind of product (good or service) provided. A generic mark can never be protected by trademark law.

To give protection to a generic term would essentially allow a monopoly on the definition of a product, which would stifle competition and use of products since competitors would not be able to describe their products for what they are. Ex: Shredded Wheat, super glue.

Trademarked terms that are overused or come to be understood by the public as the common name for a product may go through a process known as genericism or genericide. This can happen when a mark is misused or overused because a word or phrase that is no longer able to identify the particular source of a good or service, and rather becomes the name for the general name for the product, ceases to function as a trademark. If a term falls into genericism, it may lose trademark rights and will be treated as if it had always been a generic term. Ex: Escalator, zipper, aspirin, trampoline, and Murphy Bed all used to be trademarks.

Descriptive — a descriptive term or mark is a term that describes something about the product. A descriptive mark can only become protectable by trademark law after some period of exclusive use and proof of source identification by consumers [secondary meaning].

The Trademark Manual of Examining Procedure states “A mark is descriptive if it…conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” Descriptive marks generally aren’t accepted as trademarkable because, similar to generic terms, protection would bar competitive use for a necessary feature of a good or service. There are two ways to overcome a determination by the USPTO that a mark is descriptive: by disclaiming or attaining secondary meaning.

If the descriptive term is not the entirety of the mark, the applicant may be asked (or voluntarily decide) to “disclaim” that term in their trademark. A disclaimer means that the applicant is not claiming or seeking the exclusive right to use the descriptive word or phrase, apart from its use in the whole trademark. Ex: Taco Bell disclaims the word “taco” in its trademark applications. So Taco Cabana, Taco John’s, and Zombie Taco can all use the word “taco” in their restaurant service related marks, but no one else may use “Taco Bell”.

The second way to overcome descriptiveness determination is to prove that the mark has attained “acquired distinctiveness”, or what may be referred to as secondary meaning. Secondary meaning is a learned association in the minds of the public with a particular mark as relating to the source of a product. As the TMEP puts it, “the crux of the secondary meaning doctrine is that the mark comes to identify not only the goods but the source of those goods. To establish secondary meaning, it must be shown that the primary significance of the term in the minds of the consuming public is not the product but the producer.” If you wanted to trademark Guitar Center for a place to buy guitars and accessories for example, you would need to provide proof that if a consumer heard the name Guitar Center in relation to music stores, that they would instantly think of your brand.

Secondary meaning can be established by showing enough evidence to convince the examiner, which means it may vary from case to case. Some types of evidence include showing a period of exclusive use of the mark (usually 5 years), proof of sales and advertising efforts, and consumer survey/testimonial evidence. Ex: Honey Baked Ham, Baby Brie, Auto Page.

Generic v. descriptive marks

To determine whether a term is generic or descriptive (i.e. to see if it is barred from protection or if there are possibilities to get it registered), the question is: What does this term mean to the prospective purchaser of the goods?
Courts look to:
-Dictionary definitions
-Use of the term by the owner as the common name for the goods
-Use of the term by third parties as the common name for their identical/similar goods
-Use of the term in context; in text, patents, newspapers, advertisements, etc.
-The availability of other terms as the common name for the goods
-Survey/testimonial evidence from consumers

Suggestive — a suggestive term is one that subtly suggests something about the product. If determined to be suggestive, the mark may be protected by trademark law immediately.

Suggestive terms are said to identify the source of a product immediately upon use. They may suggest something about the good or service, but require “imagination, thought or perception to reach a conclusion as to the nature of the goods or services.” It is this mental process that signals the consumer to think of a particular source when seeing such a mark. Suggestive terms are classified as “inherently distinctive”, meaning they can be protected without having to show proof of secondary meaning. Ex: CitiBank, Orange Crush, Playboy.

Descriptive v. Suggestive marks

The distinction between descriptive and suggestive marks is very subjective, which means the difference in categorization may often depend on who is deciding the issue, whether it is the examiner or a judge (should the decision end up in court). Suggestiveness may be signaled when:
-The term is an unusual combination of words or phrases (usually not simply a misspelling or letter replacement)
-The term is so general or nebulous that the purchaser will not know the precise nature of the goods without further thought
-The potentially descriptive nature is not known to the general purchasing public
-The term is incongruous or fanciful in the sense that it evokes an absurd image

Arbitrary/Fanciful — a term that bears little or no relationship to the product (Arbitrary) or is a made up word or phrase (Fanciful). Arbitrary and Fanciful trademarks are the strongest marks in terms of distinctiveness and carry immediate protection under trademark law.

Arbitrary marks are common words applied in an unrelated or unfamiliar way. It is because the use of the word is non-descriptive and the ordinary meaning of the word does not apply to the product that the mark is able to be so highly protected. Ex: Apple (computers), Dove (soap), Camel (cigarettes), Shell (gasoline).
Fanciful marks are coined or made-up terms with no dictionary definition (or such definition only came about due to the mark’s existence). Ex: Kodak, Rolex, Exxon, Google.

Because of the lack of previous association (or definition), these types of marks are considered to be the most distinctive marks possible. Also because they are inherently distinctive, there is no need for proving other bases for protection like secondary meaning for arbitrary and fanciful marks.