Trademark Distinctiveness

In trademark law, distinctiveness refers to the inherent ability of a trademark to identify and distinguish goods or services in the marketplace. The distinctiveness of a trademark plays a crucial role in determining its eligibility for protection and the scope of that protection. Primarily, trademark distinctiveness can be divided into two categories: Inherent distinctiveness or acquired distinctiveness,whih are refer to two different ways in which a mark can obtain protection.

Inherent Distinctiveness: Inherent distinctiveness refers to the inherent or inherent nature of a trademark to immediately identify and distinguish the goods or services it represents. Fanciful and arbitrary marks typically possess inherent distinctiveness. These marks are inherently distinctive because they are either invented (fanciful marks) or unrelated to the goods or services they represent (arbitrary marks). Inherently distinctive marks are considered strong and are eligible for immediate trademark protection without the need to establish secondary meaning.

Acquired Distinctiveness (Secondary Meaning): Acquired distinctiveness, also known as secondary meaning, occurs when a descriptive or generic mark, which is initially not inherently distinctive, acquires distinctiveness through extensive and exclusive use in commerce. It happens when consumers associate the mark with a particular source of goods or services rather than considering it as a descriptive term. Acquired distinctiveness demonstrates that, despite being descriptive initially, the mark has come to function as a source identifier due to its extensive use and consumer recognition. To establish acquired distinctiveness, evidence of long-term and continuous use, significant advertising, consumer surveys, and other relevant factors are typically required.

Spectrum of Distinctiveness

Beyond that, trademarks are situated on a spectrum of distinctiveness, which classifies marks into five basic categories based on their strength. The spectrum also informs the scope of protection afforded to a mark, as, generally, the higher a mark is on the spectrum, the stronger it is and the greater leverage the owner has to enforce its rights against third party uses of similar marks. The five categories consist of …

Fanciful Marks: These are trademarks that have been invented for the sole purpose of functioning as a trademark and have no prior meaning or association. They are the strongest and most distinctive type of marks. Examples include Kodak, Xerox, or Exxon. Fanciful marks are afforded the highest level of protection.

Arbitrary Marks: Arbitrary marks consist of common words or symbols that are used in a manner unrelated to the goods or services they represent. These marks have a known meaning but are applied in a context that is unrelated to the actual product or service. Examples include Apple for computers or Camel for cigarettes. Arbitrary marks are also considered highly distinctive and receive strong trademark protection.

Suggestive Marks: Suggestive marks hint at or suggest a quality, characteristic, or feature of the goods or services, without directly describing them. They require some imagination or mental leap on the part of consumers to understand the connection. Suggestive marks are considered moderately distinctive. An example is Netflix, which suggests streaming and flicks (movies) but does not explicitly describe the service.

Descriptive Marks: Descriptive marks directly describe or identify a characteristic, quality, feature, or ingredient of the goods or services they represent. These marks are typically not inherently distinctive and may require secondary meaning to acquire trademark protection. Secondary meaning is established when consumers come to associate the mark with a particular source. Descriptive marks can be registered if they acquire distinctiveness through extensive use and consumer recognition, such as “International Business Machines” for IBM.

Generic Terms: Generic terms are common names for goods or services themselves and are not eligible for trademark protection. They cannot function as trademarks because they do not identify a specific source or origin. Examples include “computer” for computers or “shoe” for footwear.

Note: The level of distinctiveness determines the strength of trademark protection. Fanciful and arbitrary marks are inherently distinctive and receive broad protection, while suggestive marks and descriptive marks (with acquired distinctiveness) may receive varying degrees of protection. Generic terms cannot be protected as trademarks at all.