The Trademark “Spectrum of Distinctiveness”
Trademarks are words, names, symbols and other branding that distinguish and identify the sources of goods or services. Not every trademark is created equal, however, and the trademark “spectrum of distinctiveness” affects the level of protection the trademark receives. Distinctive trademarks are rewarded because they help consumers understand which goods and services come from where, thereby ensuring that consumers know who they are dealing with and (at least in theory) receive consistent quality. Generic terms are not protected because, in essence, they would interfere with the public’s ability to effectively identify the source of different types of goods and services.
So what makes a trademark distinctive?
Distinctive trademarks share three qualities. First, they are different from other marks used to describe similar goods and services. Second, they are not merely descriptive of the type of good or service. Third, they are recognized as identifying the source of the good or service.
Trademark Spectrum of Distinctiveness
The more distinctive a trademark the more protection it receives from trademark laws. A trademark may be inherently distinctive or it may acquire distinctiveness. Although a trademark need not be distinctive when it is created, this is the easiest way for it to qualify for protection from infringement. The “spectrum of distinctiveness” describes the range of protection a mark will receive. On one end of the spectrum is a “generic” mark, which doesn’t receive any protection, and on the other end is a “fanciful” mark, which receives the greatest protection. In between those are “descriptive”, “suggestive” and “arbitrary” marks, all of which will be discussed below.
A generic mark is one that is a common name for the product or service, as understood by the purchasing public. A generic mark cannot receive protection as a trademark. For example, an orange seller cannot trademark the word “orange” to describe their oranges.
Additional examples of marks that have been found to be generic include “realtors.com” for websites containing realtor information and “Screenwipe” for wipes for cleaning computer and television screens.
The US Patent and Trademark Office conducts a two-part test to determine if a mark is generic:
- What is the category of goods/services represented by the mark?
- Does the relevant public understand that mark to primarily refer to that category?
A mark is descriptive if it describes an “ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services” (from the USPTO Trademark Manual of Examining Procedure). For example, “The Children’s Outlet” was found to be descriptive of an applicant’s “retail children’s clothing store services.”
A mark that is merely descriptive can be registered on the Supplemental Register and subsequently the applicant can assert that a mark has attained special, distinctive meaning, called “secondary meaning” in trademark law. Once the applicant proves a mark has acquired secondary meaning, the mark can be registered on the Primary Register, which is where all distinctive marks are registered.
An applicant can show secondary meaning by submitting an affidavit or declaration to the USPTO along with a showing that the mark has gained distinctiveness via:
- Use of the mark over an extended length of time;
- Large advertising expenditures;
- Widespread recognition of the mark as a source indicator; and/or
- Survey evidence and market research results.
A suggestive mark is one that requires imagination, thought, or perception to arrive at an understanding of what is represented by the mark. For example: the mark “7-Eleven” describes, at least originally, a store that was open from 7:00 am – 11:00 pm, and the Ford “Mustang” describes a car that has horse-like attributes.
A suggestive mark may be registered directly to the Primary Register and gain the benefits of trademark registration (after the USPTO examining trademark attorney has determined there are no confusingly similar marks already in use by others, of course). Suggestive marks receive a higher level of protection than merely descriptive and generic marks.
An arbitrary mark is one that has no relation to the goods/services it represents. The Federal Circuit has defined an arbitrary mark as “a known word used in an unexpected or uncommon way.” The best example of an arbitrary mark is with “Apple” computers because the word is generic in describing an apple store, but arbitrary when describing a computer manufacturer. Other examples of arbitrary marks include “Sierra Mist” for soda and “Windows” for computer operating systems.
Arbitrary marks are considered strong brands and can be registered directly to the Principal Register.
A fanciful mark is one consisting of a coined or invented name. A few examples of fanciful marks are Kodak, Pepsi, and Google.
Fanciful marks make strong brands since they are completely made up. Like a suggestive or arbitrary mark, a fanciful mark can be registered directly to the Principal Register.
If you’re interested in learning more about the trademark spectrum of distinctiveness, trademarks in general, or how to register your trademark, please visit our trademark search and registration page or contact us to schedule your free consultation.