What Makes a Trademark Distinctive?

Trademarks are words, names, symbols and other items that distinguish and identify the sources of goods or services. Not every trademark is created equal, however, and a trademark's distinctiveness affects the level of protection it receives.

Trademark distinctiveness is rewarded because it helps consumers understand which goods and services come from where, thereby ensuring that consumers receive consistent quality. Additionally, if generic terms were used as trademarks, it would hamper the ability of the public and businesses to use those terms to identify types of goods and services.

What are the factors that indicate trademark distinctiveness?

Distinctive trademarks share three qualities. First, they are different from other marks used to describe similar goods and services. Second, they are not merely descriptive of the type of good or service. Third, they are recognized as identifying the source of the good or service.

What is the spectrum of trademark distinctiveness?

The more distinctive a trademark is the more protection it receives from trademark laws. A trademark may be inherently distinctive or it may acquire distinctiveness. Although a trademark need not be distinctive when it is created, this is the easiest way for it to qualify for protection from infringement.

The "spectrum of distinctiveness" describes the range of protection a mark will receive, from least to most:

Generic marks do not receive protection. A generic mark simply describes the product itself, such as "computer" or "bicycle." Sometimes a term that started out as distinctive becomes generic because consumers begin to use it to describe all such products, like "aspirin."

Descriptive marks will only receive protection if they acquire secondary meaning. Secondary meaning occurs when consumers begin to associate the descriptive name of a product with only one source or maker. Two descriptive words together may become distinctive, and so may surnames.

Suggestive, arbitrary and fanciful terms are inherently distinctive. They are automatically registrable with the US Patent and Trademark Office (USPTO) to receive trademark protection.

Suggestive marks indicate a characteristic or quality of the product or service, but the connection is not immediately obvious.

Arbitrary marks are words that are part of the vocabulary but are used to describe something besides the definition. "Apple®," used to identify a computer maker, is an example.

Fanciful marks are words that are made up; they have the strongest trademark protection. "Kodak®" is a fanciful name.

What happens if a trademark is not distinctive?

If a trademark is not distinctive because it is either generic or descriptive with no secondary meaning, it will not receive full protection from statutory or common-law trademark rules.

How can using a distinctive trademark help my business?

The stronger the trademark, the stronger the protection it receives in a variety of situations. A trademark that is clearly distinctive has greater protection over more product and service categories; in more geographic markets; and for more variations on the mark. In addition, it is less likely that other products and services can use the mark on their own products.

For answers to your questions about trademark distinctiveness, please consult with an intellectual property attorney.

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