Is Your Trademark Distinctive?

Business-minded people often seek to protect their names, logos, designs, and other brand indicators through trademark law.  However, not all marks are eligible for trademark protection.  Federal law requires that a trademark be “inherently distinctive” or have acquired distinctiveness or “secondary meaning” in order to be registered.  These terms of art can be tricky to understand, and a seasoned trademark attorney is a helpful guide through the trademark process.

Categorizing trademarks by distinctiveness

Trademarks fall into one of five categories, from least to most distinctive:

1. Generic: a generic trademark is a word or phrase that becomes the common term for an entire class of goods or services over time. For example, Kleenex and Band-Aid are now generic marks.
2. Descriptive: descriptive trademarks describe some aspect of the goods or services without identifying or distinguishing the source of those goods or services. For instance, Autocare Association is a descriptive mark.
3. Suggestive: a suggestive trademark implies some quality of a product or service, but does not actually state or describe the product or service outright. A good example of a suggestive mark is Netflix.
4. Arbitrary: arbitrary marks comprise words that are in common use but, when used to identify particular goods or services, do not describe a significant characteristic of the goods or services. Apple – the mark used for computers and related tech products – is one such example.
5. Fanciful: fanciful marks are those invented for the sole purpose of functioning as a trademark and have no other meaning than acting as a mark, like Adidas, for instance.

While suggestive, arbitrary and fanciful marks are inherently distinctive and protected under trademark law, generic marks cannot be registered and therefore are not protected by trademark at all.  Descriptive marks are only protected if they acquire secondary meaning.

How to establish secondary meaning

To establish secondary meaning, the trademark applicant must prove that the mark has become distinct as applied to the goods or services in commerce.  This requires evidence that the mark has become uniquely associated with a single source of those goods or services in the public’s mind.

Applicants can establish secondary meaning through prior registrations, five years of continuous use, or other appropriate evidence.  Courts rely on six factors in determining whether a given mark has acquired secondary meaning, including advertising expenditures, consumer studies, sales success, unsolicited media coverage, attempts to plagiarize the mark, and the length and exclusivity of the mark’s use.  No single factor is determinative in establishing secondary meaning, and the burden of proof is on the applicant to establish distinctiveness.  Failure to support a trademark application with this information may result in an office action.

Conclusion

In conclusion, protecting brands is crucial for businesses, and consulting an experienced attorney can assist in presenting a strong case for trademark protection.

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