Find Out Why Your Brand Name Might Be Rejected by the US Patent and Trademark Office (USPTO) and How to Prevent It.
I recently learned about the Trademark Distinctiveness Spectrum while working on the branding for my company. Unfortunately, to my disappointment, the name that had won out in the focus group is unlikely to have a trademark application approved by the U.S. Patent and Trademark Office (USPTO). So, what is the trademark distinctiveness spectrum?
Trademark distinctiveness measures a brand or product name’s uniqueness, reflecting its ability to differentiate itself from competitors’ goods or services. This concept plays a crucial role in trademark registration and the ongoing validity, enforceability, and protection of a registered mark. The distinctiveness of a trademark can be represented on a scale known as the Trademark Strength Spectrum, ranging from weak and less distinctive marks, such as generic or descriptive names, to strong and highly distinctive marks, including arbitrary and fanciful names.
The categories in the trademark distinctiveness spectrum are: Generic, Descriptive, Suggestive, Arbitrary, and Fanciful. A Generic Mark refers to a common name used for a product or service, such as “blue jeans” for denim pants or “hotdogs” for a type of food. These terms cannot function as trademarks because they do not distinguish a specific business’s products or services from those of other companies. As a result, generic marks cannot be legally protected or registered. Sometimes, a once-distinctive trademark can lose its distinctiveness and become generic, known as “genericide,” when consumers use the mark to describe an entire category of goods or services (e.g., Kleenex, Band-Aid), which could lead to a loss of trademark rights.
Genericide refers to the gradual process of a trademarked term becoming generic through use by the common individual.
Cornell Law School – Legal Information Institute
A Descriptive Mark is a trademark that directly conveys information about a product or service’s characteristics, qualities, ingredients, or purpose. These marks are not eligible for registration on the Principal Register unless they acquire secondary meaning or distinctiveness over time through use in commerce (e.g., Raisin Bran). While many businesses choose descriptive marks to communicate their offerings, such marks can be more challenging to protect. They may require evidence of their acquired distinctiveness, such as sales figures, advertising expenditures, or consumer surveys.
Secondary Meaning: a developed association in the public’s mind between the mark, name, or trade dress of a product and a specific manufacturer originating it that renders the mark, name, or trade dress protectable under trademark law.
Merriam-Websters Law Dictionary
Achieving secondary meaning is essential for brands with descriptive names or logos to receive trademark protection. Descriptive names are those that directly describe the product or service offered, making them less distinctive. Therefore, these brands need to establish secondary meaning, which occurs when the public starts associating the product or service with a particular manufacturer or source and is often the result of extensive marketing and branding efforts over time. Once a descriptive brand achieves secondary meaning, it becomes eligible for trademark protection, enabling the company to secure its brand identity, prevent competitors from using similar marks, and establish a stronger presence in the market.
A Suggestive Mark is a type of trademark that indirectly hints at the characteristics, qualities, or nature of a product or service, requiring some imagination from the consumer to make the connection. Suggestive marks fall between fanciful and descriptive trademarks in strength and distinctiveness. Examples of suggestive marks include “Airbus” for a commercial aircraft manufacturer, “Jaguar” for a fast car manufacturer, “Netflix” for a film streaming service, and “Coppertone” for sun tan oil. These marks do not directly describe their associated products or services but rather suggest a characteristic or quality related to them.
An Arbitrary Mark is a type of trademark consisting of common words or phrases without direct connection to the product or service sold. These marks are strong and protectable because they are unique and unrelated to the characteristics of the associated goods or services. Examples of arbitrary marks include “Apple” for computers, “Dove” for personal care products, “Shell” for gas stations, and “Domino’s” for pizza. While these words have meanings in other contexts, they bear no relationship to the nature of the products or services they represent, making them distinctive and eligible for trademark protection.
A Fanciful Mark is a unique, invented word or phrase created solely to serve as a trademark. These marks are considered the strongest and easiest to register due to their inherent distinctiveness and lack of relation to existing products or services. Fanciful marks require substantial marketing efforts to familiarize consumers with the brand but offer the greatest protection. Examples of such marks include Pepsi, Exxon, and Lululemon.
Obtaining trademark protection is crucial for businesses as it protects their brand identity and reputation. A trademark distinguishes a company’s products or services from those of competitors, allowing consumers to identify the source quickly. With trademark protection, a business can prevent others from using similar names or symbols that may confuse customers or damage the brand’s reputation. This legal protection also grants the company exclusive rights to use the trademark, helping its build brand recognition, customer loyalty, and market presence.
The bottom line is that trademarks protect a business’s brand identity and foster growth. By securing a trademark, companies can establish their presence in the market and prevent competitors from using similar marks that may cause confusion or harm their reputation. For businesses of all sizes, understanding the importance of obtaining protection is essential to building a solid brand and ensuring long-term success.
Edited with Grammarly recommendations.
This is neither legal advice nor a comprehensive examination of trademark law. It takes a long time to understand all of the nuances that law practitioners spend years mastering. If you need more information regarding trademark law, then please search for a qualified attorney. This is information that I have learned as I go through the trademark process and am passing on to others so that they will also be aware of these useful concepts.
Sources
Admin. (2022). Is Your Brand “Distinctive” Enough to be Trademarked? Patrola Law. https://patrolalaw.com/is-your-brand-distinctive-enough-to-be-trademarked/
CrashCourse. (2015, May 28). Trademarks and Avoiding Consumer Confusion: Crash Course Intellectual Property #5[Video]. YouTube. https://www.youtube.com/watch?v=3gWaAJR5L18
Definition of secondary meaning. (n.d.). In Merriam-Webster Dictionary. https://www.merriam-webster.com/legal/secondary%20meaning
Diangelo, E. (2020, December 22). Trademark Spectrum of Strength – Trademark Lawyer, Contract Lawyer, Business Lawyer | Tampa, FL. Trademark Lawyer, Contract Lawyer, Business Lawyer | Tampa, FL. https://www.diangelolaw.com/trademark-spectrum-of-strength/
genericide. (n.d.). LII / Legal Information Institute. https://www.law.cornell.edu/wex/genericide
Harvey, C. (2023). How Strong Is Your Brand?- Trademark “Distinctiveness Spectrum.” Law Office of Clarissa Harvey. https://www.clarissaharveylaw.com/blog/trademark/how-strong-is-your-brand-trademark-distinctiveness-spectrum
How to claim acquired distinctiveness under Section 2(f). (2022, April 23). USPTO. https://www.uspto.gov/trademarks/laws/how-claim-acquired-distinctiveness-under-section-2f-0
Keith Law, PLLC. (2022, October 19). Understand the Trademark Spectrum of Distinctiveness [Video]. YouTube. https://www.youtube.com/watch?v=b5JKBqwVsnQ
Misterovich, E. (2023). Trademark Strength Spectrum. Revision Legal. https://revisionlegal.com/trademark/trademark-law/trademark-strength-spectrum/
NexTrend Legal. (2023, February 4). Trademark Selection | Spectrum of Distinctiveness | NexTrend. https://www.nextrendlegal.com/trademark-search/selection/
Trademark Distinctiveness | Inherently Distinctive Spectrum Attorney. (2020, May 2). California Trademark Attorneys. https://www.mandourlaw.com/trademark-distinctiveness/
Turek, M. (2021, August 8). Supplemental Register vs. Principal Register – What is the Difference? US Trademark Attorney. https://yourtrademarkattorney.com/supplemental-register-vs-principal-register/
Tsaturyan, M., Esq. (2022). What Is Trademark Distinctiveness and Why Does It Matter? Mariam at Law. https://mariamatlaw.com/trademark-distinctiveness/
Christopher Padilla 