What is Distinctiveness? When Does My Brand Begin Earning Legal Rights?
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).
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