Top Ten Global Brands in 2012
2 Apple 76,568 ($m)
3 IBM 75,532 ($m)
4 Google 69,726 ($m)
5 Microsoft 57,853 ($m)
6 GE 43,682 ($m)
7 McDonalds 40,062 ($m)
8 Intel 39,385 ($m)
9 Samsung 32,893 ($m)
10 Toyota 30,280 ($m)
Source: Interbrand, Best Global Brands 2012
What is Distinctiveness?
The distinctiveness of the brand name refers to how easily customers identify a brand name with the associated products (goods) or services rather than someone else’s products or services. If the brand name incorporates word(s) that are needed by a competitor to describe their own similar products (common descriptive words), the words are not distinctive.
Distinctiveness is the opposite of descriptiveness for trademark purposes. The distinctiveness of trademarks varies along a continuum (often depending on use) from being highly distinctive (or inherently distinctive) to being merely descriptive or generic. Highly distinctive marks that are arbitrary, fanciful or suggestive (see definitions below) are registrable on the USPTO Trademark Principal Register.
Marks that are merely descriptive matter may potentially be considered to be registered on the Principal Register if they have acquired distinctiveness with secondary meaning. Generic marks (common or class names for goods or services) are not registrable as trademarks under either the Principal or Supplemental Register. More complete definitions of the distinctiveness of marks are found in USPTO Trademark Manual Of Examining Procedure, TMEP 1209.01:
“Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark [words made up by the user]. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, EXXON) or are completely out of common usage (e.g., FLIVVER).”
“Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey).”
“A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.”
“Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.”
“Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. . . .Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. Therefore, a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable.”
Composite marks, mark that are partly descriptive or generic and partly suggestive, arbitrary or fanciful, may be registrable on the Principal Register where the descriptive or generic part is disclaimed for exclusive use.
How Does a Brand Name Obtain Secondary Meaning as a Trademark?
Secondary meaning is when the consuming public has made a link between an alleged
mark and the source of the mark. “A mark has acquired secondary meaning when it has
been used so long and so exclusively by one producer with reference to its article
that, in that trade and to that branch of the purchasing public, the word or phrase
has come to mean that the article was the first producer's trademark.” G. Heileman
Brewing Co. v. Anheuser-
The factors considered in determining whether a descriptive mark (not inherently distinctive) has achieved secondary meaning include:
(1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer as evidenced by survey or direct consumer testimony;
(2) the degree and manner of advertising under the claimed trademark;
(3) the length and manner of use of the claimed trademark; and
(4) whether use of the claimed trademark has been exclusive.
Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1358 (9th Cir.1985).
The exclusiveness factor is a problem for many trademarks that are not distinctive because what makes them not distinctive is often that common descriptive words are being used to identify the product or service in the consumer’s mind. Since the words are common, they are not being exclusively used by just one business owner.
When does my Brand Name start earning legal rights? Depends on if the Brand Name is Distinctive.
THE DATE when a business obtains trade identity rights using a trademark (“mark”) depends on the distinctiveness of the mark. If a business wants to use a trademark to protect the quality and authenticity of a brand name, the brand name must follow the rules for achieving legal rights in that brand name. “A business will obtain rights in the mark upon first use only if the mark is inherently distinctive. If the mark is not inherently distinctive, a business may obtain ownership rights in the mark when the mark attains a secondary meaning.” Coach House Restaurant, Inc. v. Coach and Six Restaurants, Inc., 934 F.2d at 1559 (C.A.11 (Ga.), 1991). Even if someone uses a term as a trademark, “if [the term] is not distinctive, the user does not have a trademark because he has no existing trademark rights.” Otto Roth & Company, Inc. v. Universal Foods Corporation, 640 F.2d 1317 (Fed. Cir. 1981). (See Examples of Strong & Weak Trademarks at StrongTrademark.com.)
Trade identity rights can be achieved using including trademarks (& service marks), trade names, domain names, corporate names, commercial names, etc. with varying levels of legal protection available under each category. A business owner can obtain proprietary rights in a term “by ownership of a registration, prior use of a technical "trademark," prior use in advertising, prior use as a trade name, or [ ] other type of use [that] may have developed a trade identity.” Otto Roth & Company, Inc. v. Universal Foods Corporation, 640 F.2d 1317 (Fed. Cir. 1981). Trademarks are the most desirable trade identity right, especially federally registered trademarks on the Principal Register, because they have more rights given under the federal trademark statutes and common law rights than terms that do not qualify as trademarks. A federally registered trademark has rights throughout the U.S. even if the mark has only been used in much smaller geographic area. Without federal registration, trade identity rights are only earned in the geographic area where the trade actually takes place.
Being able to associate a brand name with ® to designate a federally registered trademark is a strong business tool. Purchasing decisions are continually influenced by trademarks by making one product or service distinct from another. The International Trademark Association (INTA) in their Top Ten Reasons Why You Should Care About Trademarks calls a Trademark the Most Efficient Commercial Tool Ever Devised. The key to a strong trademark is its distinctiveness.
Tests for Distinctiveness
There are several tests to measure distinctiveness including: the Imagination Test (a test for suggestiveness) and the Need Test (as test for descriptiveness).
The imagination test asks how much imagination a consumer must use to associate a
given mark with the goods or services it identifies. The product signified by an
arbitrary mark [the most distinctive] requires great imagination. The more imagination
required, the stronger the mark is. The "need test" approaches the problem from the
opposite end. It asks to what extent a mark is actually needed by competitors to
identify their goods or services. If the message conveyed by the mark about the goods
or services is so direct and clear that competing sellers would be likely to need
to use the term in describing or advertising their goods or services, then this indicates
the mark is descriptive.... As the amount of imagination needed increases, the need
of the mark to describe the product decreases. U.S. v. Six Thousand Ninety-
A brand name that is not distinctive, such as a brand name that is merely descriptive
or generic, is hard to protect from competitive use. The law does not allow brand
name owners to take descriptive or generic dictionary words and claim them for exclusive
use. A competitor is allowed ‘fair use’ of someone else’s brand name if the brand
name is descriptive and the brand name is used in a non-
At best, a merely descriptive brand name may only potentially be registered on either the USPTO Federal Principal Register after 5 years of acquired distinctiveness through a secondary meaning with the proper evidence or on the Supplemental Register. See Comparison for the advantages of federal registration and the differences between the two registers.
Often the term ‘distinctiveness’ is used in trademark law as part of the term ‘acquired distinctiveness,’ another term for secondary meaning. An applicant of a ‘not distinctive’ proposed mark who seeks registration on the Principal Register must show acquired acquired distinctiveness by establishing, through evidence of promotion, long use, advertising expenditures, and breadth of distribution or sales figures, that the public has come to recognize the proposed mark as an indicator of source.
The Broadest Protection Format for Trademarks
For the broadest protection, the standard character format should be used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element. Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation. The stylized or design format, on the other hand, is appropriate if you wish to register a mark with a design element or word(s) or letter(s) having a particular stylized appearance that you wish to protect. The two types of mark formats cannot be mixed in one mark. A distinctive stylized format may also be registrable when the standard character format of the same word(s) cannot be registered on their own where the distinctiveness of the mark is obtained from the design rather than the word(s).
Federal Registration of Trademarks
Why is registering a smart choice? To capture goodwill into a protectable asset and to keep newcomers to the market from using your name and jeopardizing your success. Federal Registration of a Trademark with the USPTO expands existing trade rights or common law rights in a name, logo, symbol, trade dress or other type of trademark or service mark so that a trademark owner can capitalize on the goodwill and customer recognition associated with the mark. A federal registration on the Principal Register can be used to stop others from taking your name or names confusingly similar to it to sell similar products and can be used to stop counterfeiting imports or state or local counterfeiters.
About 50% of trademark applications never register and many are because the newcomer’s or junior’s trademarks are too similar to marks that are already registered (prior users or seniors). For someone with a federal registration, the USPTO stops new similar junior applications by issuing Likelihood of Confusion refusals (the most common refusal) without additional cost to the senior user every time they do it. A senior user without a registered mark has to try to stop all these newcomers themselves at their own cost each time. If the USPTO trademark examiner uses your registered trademark to stop even just one newcomer from registering a trademark very similar to yours, your investment may have already paid off.
SUPERCHARGING YOUR RIGHTS: The list below compares the Principal Register and Supplemental Register and Common Law Rights. Principal Registration of a trademark gives the most rights because it takes the basics of trademark rights from common law and boosts it by adding features. (All the YES rows are the extra features.)
Common law rights are based on prior use, distinctiveness, ownership, using a trademark as a trademark, and other principles that have helped trademark owners to protect their trademarks in the geographic areas that they trade in. Federal registration of trademarks on the Principal Register takes all these common law rights and adds a few more benefits that were added by the statute (the Lanham Act), called statutory rights. Under common law, a trademark is only protected in the geographical area where sales or marketing have actually occurred (“in trade” and “in commerce”). Federal registration spreads rights throughout the U.S. even if a registrant has only sold in a small geographical area.
EVEN MORE BOOSTING: Third parties like Google, Yahoo, Bing, Twitter, Facebook, and others boost registration rights even further by offering their own protection to trademark owners that can clearly prove their rights to a mark and a Principal Registration works best.
The table below lists the rights that the federal government gives you if your federal trademark application matures into a registration (see the YES rows) but there are more rights that third parties grant to federal trademark registrants. Third parties such as Google, Yahoo, Microsoft, Bing, Twitter, Facebook and others will help trademark owners to protect their rights. For examples of increased rights provided by third parties to trademark owners, see GOOGLE ADSENSE TRADEMARK COMPLAINT FORM, MSN TRADEMARK SUPPORT, MICROSOFT ADVERTISING GUIDELINES, TWITTER TRADEMARK POLICY.
PROTECTING YOURSELF MEANS GETTING THE RIGHT HELP: At the end of the day, a trademark owner is responsible for protecting their own rights. A owner must claim and enforce their rights in order to receive the benefits. Online medias, advertisers, social networks and others will help you to protect your rights if you can prove those rights clearly to them with a federal registration of a trademark and only if you take the initiative to do so.
Not Just Patents® Legal Services is the right help. Our success rate with registering trademarks is very good and our costs are not high which can turn out to be a great investment. Our success rate with answering office actions is also very good but unfortunately, many refusals given to junior users for Likelihood of Confusion stick because the junior user really is jeopardizing the success of someone else who used the trademark first and registered their trademark first. But not always. Sometimes the one who registered first was not the first to use the trademark and enforcing rights requires going further and opposing or cancelling the trademark of the owner who registered first but didn’t use first. We can help with this too.
BUT WHAT IF THE SERVICE YOU BOUGHT DIDN’T DO A GOOD JOB ON YOUR TRADEMARK REGISTRATION?
A bad application or no registration or even Supplemental Registration means less
rights and rights that are harder to enforce. But more expensive doesn’t necessary
mean more rights, a Not Just Patents ® Federal Registration of a Trademark is NOT
expensive. A lawyer that lists trademarks as one of many, many services that they
provide may be just as bad as a service that doesn’t use any lawyers/experts at all
and disclaims that their service does not replace competent advice. Call us in the
U.S. at 1-
This web site is supposed to be enough information to let you know that you would rather succeed than not and that a trademark can be an incredible tool and investment. But this web site, or any web site short of USPTO.gov, is not enough information to make up for knowing all the rules and exceptions in the USPTO trademark guide, the TRADEMARK MANUAL of EXAMINING PROCEDURE (TMEP) (over 1500 pages), and the TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) (over 1300 pages). Knowing these rules is really important; being able to apply these rules to facts is even better.
Federal USPTO Trademark Registration
There are many statutory advantages of Federal Registration for trademarks on the Principal Register above and beyond those provided by common law including:
A few of these advantages apply for marks on the Supplemental Register as well. See Comparison of Principal Register with Supplemental Register for more information.
Not Just Patents ® Legal Services provides a very economical package for USPTO (or
international) Trademark Registration. See What to Expect from a Not Just Patents
® Trademark Attorney for more information on what steps we take to protect your rights
and help you develop a strong trademark. We can provide each step individually or
as a trademark registration package. A trademark registration (or trademark application)
package includes: a ‘right to register’ step (which includes a distinctiveness analysis
step and a function as a mark analysis), a trademark search (federal, state and common
law search) and conflict analysis step, a goods and services identification step,
a specimen review step, a state registration step, a federal registration step, and
a federal Office Action response step. Our fixed price per classification for the
whole package may be less than what you might pay to another attorney or law firm
to answer a USPTO Office Action Refusal at an hourly rate. Call us at (651) 500-
Not Just Patents ® is a registered trademark of Not Just Patents LLC with a USPTO
Federal Trademark Registration (R/N 3556868-
For more information from Not Just Patents, see our other sites.
Ornamental Refusal (a type of Specimen Refusal)