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Why Trademark Distinctiveness Matters

A strong trademark is a valuable asset that can elevate the reputation of a company and influence consumer decisions. When developing branding for a product or service, businesses need to consider not only the marketing appeal of a proposed trademark but the level of legal protection it will receive based on a concept known as “trademark distinctiveness.”

This post explains why trademark distinctiveness matters when choosing a brand identity, and considers whether a less distinctive trademark might make sense in some circumstances.

What is a Trademark? What is a Service Mark?

A trademark is any word, phrase, symbol, and/or design that identifies and distinguishes the source of one company’s product from those of others.

Examples of trademarks include the word “Jaguar” for luxury cars and the word “Apple” and the associated apple graphic logo for computer products.  A service mark distinguishes the source of a service rather than a product. “Southwest Airlines” is an example of a service mark for domestic flight services.

Many companies use both trademarks and service marks; for example, “Taco Bell” is a service mark for fast-food restaurant services and is also used as a trademark on food products like salsas that are sold in grocery stores.

 

What is Trademark Distinctiveness?

Trademark distinctiveness is an important concept in the law that applies to trademarks and service marks. In order to be eligible for federal trademark protection and registration at the United States Patent and Trademark Office (or “USPTO”), a trademark or service mark must “identify and distinguish” the relevant goods or services.

The ability of a mark to “identify and distinguish” a good or service is known as “distinctiveness.” If a proposed mark is not distinctive, it is ineligible for federal trademark protection and the many benefits associated with registration. In addition, the distinctiveness of a trademark or service mark can impact its enforceability and continuing validity once it is registered.

The Spectrum of Distinctiveness

When it comes to distinctiveness, not all marks are created equally.

Trademark distinctiveness exists on a spectrum, with some proposed marks totally ineligible for protection and others receiving greater protection under federal law.

Here are the five categories of distinctiveness ranging from lowest to highest.

  • Generic: A generic mark uses a common word for a product or service, such as “Scooter” for a foot-powered scooter or “Valet” for a service employed to park cars. Generic marks cannot identify the source of a good or service and are therefore completely ineligible for trademark protection.
  • Descriptive: A descriptive mark is an ingredient, quality, characteristic, function, feature, purpose, or use of a good or service. A descriptive mark is not automatically distinctive and becomes eligible for trademark protection only when it becomes associated in the minds of the public with the relevant good or service. The most well-known example of a descriptive mark is “Coca-Cola” for a cola drink made using ingredients from the coca plant. Taken on its own, this mark is descriptive. But the “Coca-Cola” mark became so closely associated with a particular brand of beverage that it acquired distinctiveness.
  • Suggestive: A suggestive mark suggests or hints at a good or service, but requires some imagination to arrive at the ultimate meaning of the mark. Although less distinctive than arbitrary or fanciful marks, a suggestive mark is distinctive and eligible for protection. Some well-known suggestive trademarks include “Chicken of the Sea” for canned tuna, “Trek” for mountain bikes, and “7-Eleven” for convenience stores (which were originally named for their operating hours).
  • Arbitrary: Arbitrary marks are existing words that have no relation to the relevant goods or services. Examples of arbitrary marks include “Dove” for hygiene products, “Uber” for a ride-hailing mobile app, and “Camel” for cigarettes. Arbitrary marks are inherently distinctive and afforded higher trademark protection by courts.
  • Fanciful: A fanciful mark consists of an invented word or phrase. Fanciful marks are at the highest end of the distinctiveness spectrum and receive the most protection from courts. Many of the most well-known trademarks are fanciful marks, including “Google” for an internet search website, “Xerox” for copiers, and “Kodak” for cameras and film.

The highest level of trademark protection is afforded to arbitrary and fanciful marks, which are easiest to register with the USPTO.

In the event of a dispute at the USPTO or in a trademark infringement lawsuit, these marks are more straightforward to defend. In some cases, it can be easier to license arbitrary and fanciful marks and expand into new product lines. For these reasons, many trademark lawyers urge their clients to select arbitrary or fanciful marks when developing a brand. But this might not always be the right advice for every client.

The Distinctiveness Trade-Off

Although there are many purely legal benefits to selecting a trademark or service mark that is high on the distinctiveness spectrum, companies need to weigh the marketing and business implications of any proposed mark.

Building consumer recognition for an arbitrary or fanciful mark can take several years (and may require a significant marketing investment that is cost-prohibitive for start-ups and small businesses). Until there is widespread familiarity with a highly distinctive mark, it may be difficult for new customers to make the connection between the mark and the goods or services with which it is associated. Moreover, arbitrary and fanciful marks can raise challenges when it comes to search engine optimization and social media.

An experienced trademark lawyer can help a business strike the right balance between selecting a protectable trademark and practical marketing and business considerations. Working with an intellectual property lawyer in the early stages of brand development can help ensure that trademark rights are secured, protected, and enforced if needed.

Federal trademark rights are just one piece of a company’s overall intellectual property strategy, which may also include patents, trade secrets, copyrights, domain names, and common law protections for intellectual property. Investing in legal advice at the inception of a new product or service can really pay off in the long-term, so don’t wait to speak to an intellectual property lawyer about how to build and protect a strong brand.