Branding Considerations: Trademarks and the Spectrum of Distinctiveness

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Branding Considerations: Trademarks and the Spectrum of Distinctiveness

By | 2019-08-01T12:23:20+00:00 August 1st, 2019|

When choosing a brand name or slogan, an often-overlooked consideration is the strength of potential trademark protection.  Whether a fresh-faced entrepreneur starting a new business or a seasoned marketing expert, anyone who creates a brand must contemplate the degree of protection afforded to that mark.

To obtain protection under U.S. trademark laws, marks must be “distinctive” with respect to the goods or services for which they issue.  Protectable and enforceable marks are either inherently distinctive or have acquired distinctiveness through secondary meaning.  Below is the “spectrum of distinctiveness,” or levels of strength under U.S. trademark law, from strongest to weakest

  1. Arbitrary and Fanciful

The strongest marks, arbitrary and fanciful marks, bear no relation to the goods or services for which they are used.  These marks qualify as inherently distinctive because they immediately function to identify the source of the goods or services.  Accordingly, they do not require proof of secondary meaning to receive federal protection as marks.

Fanciful marks are conjured or made up marks that bear no relation to anything.  A famous example is KODAK® (founded in the author’s hometown), which represented an entirely new word that had nothing at all to do with film, cameras, or photography.  Yet, for well over a century the public has unquestionably associated that once-new word with the products it sells.

Arbitrary marks similarly have no relation to their goods or services, but tend to be names or designs that already exist.  Where they acquire strength as marks is in their arbitrary application to those goods or services.  Some well-known examples are APPLE® for computers and phones and POLO® for clothing and fragrances.

  1. Suggestive

The next-strongest category of marks is suggestive marks, which do not exactly or directly describe the goods or services, but rather suggest some aspect of the goods or services.  They require some imagination, thought, or perception to identify the mark with the type of goods or services offered.  One example is COPPERTONE® for suntan oil and sunscreen.  Suggestive marks also are considered inherently distinctive, and thus do not require proof of secondary meaning.  But, demarcating between suggestive and descriptive marks (which require secondary meaning) can prove difficult.

  1. Descriptive

Descriptive marks, as their title implies, merely describe a purpose, function, feature, quality, characteristic, ingredient, provider, or user of the goods or services.  Because descriptive marks are not inherently distinctive, they require proof of secondary meaning.  Owners of descriptive marks can prove secondary meaning by showing use and promotion over time which causes the public to associate the mark with the source of the goods and services.  Even if they can prove acquired distinctiveness, however, registrable descriptive marks still receive the narrowest scope of protection.  They are thus the weakest marks on the spectrum.

  1. Generic

Finally, generic words are those that describe the very good or service offered.  They are incapable of functioning as marks and receive no protection under U.S. trademark laws.  To utilize a prior example, a purveyor of apples could not enforce the name “Apple” as a trademark for apples.

Before investing significant resources in adopting a new brand for your goods or services, consult with an experienced trademark attorney to assess whether your proposed mark may be weak, unenforceable, or unregistrable, to minimize the risk of adopting a mark that infringes or dilutes the rights of prior trademark owners, and to assist in registering the mark in important territories.

 

The Beggs & Lane Intellectual Property Group assists clients with a variety of trademark matters, including trademark registrations with state trademark offices, the United States Patent and Trademark Office (USPTO), and foreign IP offices, and enforcement of trademark rights in the USPTO, the Trademark Trial and Appeal Board (TTAB), courts throughout the U.S., and the World Intellectual Property Organization (WIPO).