Top Ten Global Brands in 2012

1  Coca-Cola 77,839 ($m)

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-Busch Inc., 676 F.Supp. at 1467 (E.D. Wis., 1987).

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

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-Four (6,094) "Gecko", 949 F.Supp. at 771 (Hawaii, 1996).

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-trademark manner in good faith. 15 U.S.C. § 1115(b)(4).

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 1-651-500-7590: We can help.

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, 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:

  • Can be used against future applications of confusing similar marks by the USPTO;
  • Mark is easy to find for search reports;
  • Owner can use ® to symbolize federal registration;
  • Incontestability of mark after 5 years;
  • Statutory presumption of validity;
  • Statutory presumption of ownership;
  • Statutory presumption of distinctiveness or inherently distinctive;
  • Statutory presumption of exclusive right to use the mark in commerce;
  • Provides access to anti-counterfeiting statutes. For example, a trademark on the Principal Register can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods;
  • Ability to bring federal criminal charges against traffickers in counterfeits;
  • Use of the U.S. registration as a basis for prior use to obtain registration in foreign countries without having actual use in commerce in those countries;
  • Owner gets trademark rights in all U.S. states even if only in commerce in less states.

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) 500-7590.

Not Just Patents ®  is a registered trademark of Not Just Patents LLC with a USPTO Federal Trademark Registration (R/N 3556868-service mark for Legal Services) on the Principal Register.

Call 1-651-500-7590 or email or for Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      



Steps to a Patent    How to Patent An Invention

Patent Search Steps

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

35 U.S.C. 101 Inventions patentable.

Verify a Trademark  Be First To File   How to Trademark Search

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

Trademark Statistics    Business Name Cease and Desist Letters

How To Answer A Trademark Cease and Desist Letter

35 U.S.C. 282 Presumption of validity; defenses

Trademark Refusals    Does not Function as a Mark Refusals

37 CFR § 1.53 Application number, filing date, and completion of application

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Filing Requirements for Patent Applications

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

List of U.S. Patent Classifications

Grounds for Opposition & Cancellation     Cease and Desist Letter

How Do U.S. Patent Classifications Work?

Valid/Invalid Use of Trademarks     Trademark Searching

Patent Statistics     Sample Patent, Trademark & Copyright Inventory Forms

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Proximate Function

Color as Trade Dress  3D Marks as Trade Dress

Invention Information-  What is the Invention?

Ornamental Refusal  Standard TTAB Protective Order

Patent Field of Search

Descriptive Trademarks  Likelihood of Confusion 2d

Patent search-New invention

Merely Descriptive Trademarks   Merely Descriptive Refusals

Patent Search-Non-Obvious

Register a Trademark-Step by Step   Trademark Fixer

Difference between Provisional and Nonprovisional Patent Application

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Shop Rights

Section 2(d) Refusals

Patent Pending see also Patent Marking

Typical Brand Name Refusals  What is a Family of Marks?

Patent Drawings

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What is a Small or Micro Entity?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Changes To Implement the First Inventor To File Provisions of the America Invents Act

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Patent steps

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

PCT Patent Application information

Trademark Clearance Search   DIY Trademark Strategies

Provisional Patent Effect on Patentability

Samples of Responses to Office Actions

ID of Goods and Services see also Headings (list) of International Trademark Classes

Broad Patents

Geographically Descriptive or Deceptive

Making Amendments in Response to Office Actions

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples Office Action Responses More Examples

Trademark Incontestability  TTAB Manual (TBMP)

Trade Secrets

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

State & Federal Trade Secret Laws

Differences between TEAS and TEAS plus  Zombie Trademark

Chart of Patent vs. Trade Secret

What Does Published for Opposition Mean?

How to Keep A Trade Secret

Acquired Distinctiveness  2(f) or 2(f) in part Extension of Time to Oppose

©2008-2014 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590 or email: This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us See us at

Not Just Patents® LLC

PO Box 18716, Minneapolis, MN 55418  


Aim Higher®

Facts Matter

Search Not Just Patents® sites:

Tie It Up

Securing the Right IP