What is Trademark Distinctiveness and Why Does it Matter?

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A trademark can be an extremely valuable asset to a brand. When a company is looking to protect its name via trademark law, it must consider the level of legal protection it can receive over its name. Making the assumption that you can trademark whatever name you select is a significant risk, as only certain marks are protectable under trademark law.

 

The concept of “trademark distinctiveness” dictates the level of protection offered to various marks when associated with particular goods or services. A mark must be able to identify and distinguish those goods or services for registration to be granted by the United States Patent and Trademark Office (USPTO).

 

A mark can fall within a certain category on the trademark distinctiveness spectrum depending on how unique it is when used in connection with the goods or services being offered. Some marks are given greater protection than others under trademark law based on their distinctiveness. The more distinctive your mark, the greater legal protection it may be granted. The following categories illustrate the five generally accepted levels of trademark distinctiveness, organized from least distinctive to most distinctive:

 

  • Generic: Any word that is commonly used for a particular good or service is considered generic, is the least distinctive, and is thus generally deemed ineligible of trademark protection. Granting a company trademark protection over a generic mark would grant that company a virtual monopoly over the use of that word in connection with that good or service. For example, you would be unable to register the word “CAR” in association with vehicles or the word “BICYCLE” for the sale of bikes or bike sale services or stores.
  • Descriptive: A word that describes a characteristic, feature, purpose, or use of a product or service falls into the descriptive category. For example, the mark “24-HOUR FITNESS ®” used in connection with an athletic gym or recreational facility is descriptive. “AMERICAN AIRLINES ®,” used in connection with an airline in America, is another example. Descriptive marks on their own are not generally eligible for trademark protection. Descriptive marks, however, may become eligible only when the mark becomes associated in the minds of the public with the relevant good or service. 
  • Suggestive: Suggestive marks include words that hint at or suggest a product or service without directly describing it. The consumer must use their own imagination to make a connection between the name and product. “GREYHOUND ®” used in connection with transportation is a well-known example of a suggestive mark, as “greyhounds” suggest speed. Despite being less distinctive than the two categories below, a suggestive mark is distinctive enough for trademark protection.
  • Arbitrary: A mark is arbitrary if it incorporates a word that already exists but is used in connection with a product or service that has no relation to the word. For example, a popular brand selling computers, television, and cell phones use the mark “APPLE ®,” a word entirely unrelated to the products the company sells. Arbitrary marks are granted full protection under trademark law.
  • Fanciful: The most distinctive marks, called “fanciful” marks, are marks made up of an invented word or phrase. Popular examples of fanciful marks include “GOOGLE ®,” “VERIZON ®,” “EXXON ®,” and “PEPSI ®.” Like suggestive and arbitrary marks, fanciful marks are provided full trademark protection.

 

How can I ensure that my mark will be distinct enough for federal trademark protection?

 

If you are brainstorming brand or company names and want to ensure that your mark is eligible for trademark protection, you must consider what category in the above distinctiveness spectrum your potential mark may fall into. Consider the following:

 

  • If your name is a word you invented or a word entirely unrelated to the product or service you are offering, you have a more distinctive trademark.
  • If your mark is related to the product or service you are offering, your mark may be eligible for trademark protection. However, if the name is merely descriptive of the product or service, your mark will likely not be eligible for trademark protection.
  • If your name is commonly used to describe the product or service you are offering, your mark is likely ineligible for trademark protection because you cannot be the only party legally allowed to use that word in association with a particular product or service it references.

 

Are there any downsides to selecting more distinctive marks for a brand or company?

 

Generally, it is in your company’s best interest to select a mark which falls under a category that is higher on the distinctiveness spectrum. On the other hand, using an arbitrary or fanciful mark can often require a higher marketing investment because developing consumer recognition of your mark can take significant time and effort. Consumers might find it difficult to associate your name with the product or service you sell if it is highly distinctive. It can also be much more challenging for consumers to discover a product or service with a highly distinctive name.

 

More suggestive marks may be a better choice for some companies, particularly for brands that lack a large marketing budget or the ability to wait for the slow development of brand recognition.

 

Why is trademark distinctiveness important?

 

The importance of the concept of trademark distinctiveness may seem obvious at first glance—the more distinctive my mark, the better, right? The level of distinctiveness that is best for your company is not, in fact, this obvious. As discussed above, sometimes less distinctive marks can be more beneficial for your company than more distinctive marks. That being said, the more distinctive your mark, the more likely it will be granted trademark protection. Even though you may be inclined to think that widespread use and recognition of your mark is a good thing—and it generally is—you must also consider consumers’ use of your mark to ensure that you maintain protection over your mark and are not at risk of losing that protection.

 

No matter what level of distinctiveness your potential mark or marks may fall into, consulting an intellectual property attorney before making decisions regarding name selection and trademark registration can help you protect and enforce your brand’s rights and identity.