16. What is the “distinctiveness” requirement for trademark rights?
A proposed trademark must be “distinctive”. This means that the mark cannot be so similar to another mark that it causes consumers to confuse the brand or entity associated with that mark. If it is confusing to the consumer, the USPTO will reject the application for registration. So, the likelihood of confusion is partially based upon the mark and partially related to the nature of the product or service that it represents. To determine if a similar mark is being used in commerce, the USPTO trademark attorney will search for registered marks and unregistered marks with common law protection. The attorney will then examine whether the commercial activity represented by any similar marks is related to the commercial activity to be represented by the proposed trademark. If there is a high degree of similarity for both of these factors, it is more likely that the mark will be confusing to consumers. If the mark conflicts with a mark that was registered prior to the proposed mark, the USPTO will reject the registration. If the mark conflicts with another proposed mark that was filed before it, the USPTO will suspend its review and notify the applicant of the conflict.
Classification of Distinctiveness
A proposed mark may have varying degrees of distinctiveness. The higher the degree of distinction, the less likely it is to confuse customers about the brand or entity that it represents. If a mark is less distinctive, it may require an applicant to demonstrate public perception or recognition of the mark in order for it to be capable of trademark protection. The following are degrees of trademark distinctiveness:
• Arbitrary and Fanciful terms – A “fanciful mark” has no other meaning. It is created to represent the commercial activity claiming trademark rights. An “arbitrary mark” is the association of an existing word or symbol with a commercial activity that has no relation or logical connection to that mark. If a proposed trademark falls under either of these categories and is not already used by another business, it is automatically recognized as inherently distinctive.
⁃ Example: Yahoo, Bing, Google, Starbucks, Verizon, and Exxon are all examples of fanciful terms. Many of the logos, sounds, or non-sensical expressions associated with companies would also be fanciful. Apple computers, Camel cigarettes, Colt pistols, Amazon web services, Subway restaurants would all constitute arbitrary words. Further, the images or logos used in connection with these brands would be arbitrary, such as Ronald McDonald or the GEICO lizard.
• Suggestive Marks – A suggestive mark somehow suggests the underlying business or entity represented by the mark. It does not describe the entity, or its product or service, but something about the mark somehow relates to or helps the consumer understand the brand or entity that the mark represents. It generally requires a certain level of cognition, creativity, or imagination in how the product is perceived.
⁃ Example: Citibank, Inc., Playboy, Inc., Microsoft, Coppertone, are all words used as suggestive marks to represent a brand or commercial activity. While less common, the symbols used by a company may also suggest the commercial activity, such as the Zappos shoe symbol or Yankee’s baseball logo.
• Descriptive Marks – A descriptive mark, as the name implies, describes in some way the product or service represented. This can include information about or allude to the nature, characteristics, geography, or qualities of the product or service. To qualify as a mark, the owner must demonstrate that the mark has achieved “secondary meaning” beyond the literal definition of the mark. Secondary meaning is when consumers associate the mark directly with the brand or business rather than simply a general description of the brand or company’s primary commercial activity. This requirement ensures that there is no confusion between the literal meaning and the brand or commercial activity.
⁃ Example: Chick-Fil-A, Home Depot, American Apparel, First Bank, Pizza Hut are all examples of descriptive marks. All of these companies have names that describe their business; but, the business names are now commonly understood by customers to represent the particular business rather than a general commercial activity. It is far less common that a image or logo will be descriptive unless the symbol incorporates a descriptive word, phrase, or slogan.
• Generic Marks – A generic mark is not capable of trademark protection. Generally, the mark is not distinctive because it represents a type or class of commercial activity (product, service, etc.). A valid mark may become generic if the mark begins to describe every product or service of that type. That is, it no longer makes the specific product or service distinctive.
⁃ Note: A business mark that is becoming generic will fight to restore its distinctiveness for that business’ sproduct or service. This is the case with Xerox, Chapstick, and Google.
⁃ Example: A generic mark may include aspirin, laundromat, car, band-aid, kleenex. All of these were once brands that later became synonymous with the product or service.
• Discussion: How do you feel about the USPTO distinctiveness requirement? Should a company be able to register a mark that is already being used? Why or why not? Should it matter if the mark is being used to represent an unrelated commercial activity? Why or why not? Should descriptive marks be allowed to be trademarked? Why or why not? Should arbitrary, fanciful, and suggestive marks be required to achieve secondary meaning? Why or why not? Do you think the law should allow a trademark to become generic because of popular use and generic association by consumers? Why or why not?
• Practice Question: Darla is launching her new pet product line. She has is going back and forth between Perfect Pet Products and Octep, which is Pet Co spelled backwards, as her business name. If Darla plans to trademark the business name, what analysis of each name will the USPTO undertake in determine whether the name is sufficiently distinctive?