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 Assessing Trademark Strength.

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 may only be earned in the geographic area where the trade actually takes place.

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.

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