Strength Matters: Trademark Distinctiveness and Protection
All men are created equal, but the same doesn’t apply to trademarks. Some trademarks are entitled to and, in fact, do receive greater protection under state and federal laws than other trademarks. It is critical for businesses to keep this in mind when they are developing their brands, as their rights with respect to their marks could be greatly affected. What determines the amount of protection a trademark receives? Great question! The strength (and thus amount of protection) a trademark receives is determined by its distinctiveness, meaning how well a mark distinguishes itself in regard to the goods or services it is associated with in comparison to other non-related goods and/or services.
Three important qualities of distinctive marks are: (1) they are distinct/different from other marks being used to describe or identify similar goods and/or services; (2) they don’t simply describe the goods and/or services being referenced; and (3) they are viewed as identifying the source of the goods and/or services. The more distinctive a mark is, the easier it is to register, and the more protection it receives.
Trademark distinctiveness is a spectrum, which is comprised of five different categories. Determining the “distinctiveness” of a mark involves figuring out where on the “spectrum” of distinctiveness a mark falls. The spectrum ranges from least to most distinctive:
Generic marks aren’t trademarks, and thus, don’t receive any protection. Generic marks simply name the product itself. Examples include terms, such as “e-mail,” “Internet,” and “computer.”
Describing goods and/or services are associated with descriptive marks. These by themselves, don’t identify the source of specific goods and/or services, and, as a result, don’t receive protection. An example is the term “computer screen.” Unlike generic marks, descriptive marks can receive protection if they obtain secondary meaning. More specifically, they receive protection if it can be shown that consumers associate the name/mark as having one source. A prime example of a descriptive mark with secondary meaning is Sharp, the television/electronics company.
Suggesting or indicating a quality or characteristic of a product and/or service is associated with this type of mark. Suggestive marks often appear similar to descriptive marks, but unlike descriptive marks, they possess some connection to the goods and/or services, even if it is not readily apparent. An example of a suggestive mark is Citibank, the bank/financial services company.
Arbitrary marks are marks that pair goods and/or services with something completely unrelated. The most widely cited and easy to understand example is Apple, the computer company. The word Apple, under its typical definition and use, has nothing to do with computer electronics.
These marks or words have been invented solely to reference specific goods and/or services, and have no other meaning. Fanciful marks receive the strongest amount of protection under trademark laws. Examples of fanciful marks, include Kodak, Xerox, and Exxon.
It is important to note that suggestive, arbitrary and fanciful marks are considered inherently distinctive, and can be registered with the USPTO. While nothing prevents you from using a generic or descriptive mark in building your brand, it could cause major headaches for your business down the road, lead to consumer confusion, and ultimately leave you with no way to protect your business’ reputation or any goodwill you’ve built.