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The Spectrum Of Distinctiveness In The Trademark Law

by | Jun 26, 2022 | Intellectual Property

When it comes to intellectual property, there are a few key concepts that business owners need to understand to make informed decisions about protecting their creations. One of these concepts is the spectrum of distinctiveness, which refers to how identifiable a mark is to consumers. Trademark pertains to any logo, symbol, word, colour, or slogan associated with a brand. The mark has to be “distinctive” for it to be registered with the US Patent and Trademark Office (USPTO). This article will explore the spectrum of distinctiveness in trademark law and its impact on registrability and protection. Stay tuned!

 

The Requirement of Distinctiveness under Trademark Law

Before we go deeper into that, let’s talk about the basic benefits of a federally registered trademark. A federally registered trademark can help the owner keep other people from using a similar mark that is in the same market and might cause confusion among consumers. To receive and enforce a federally registered trademark, a mark must be distinctive. When your application is under review at the USPTO, an examiner attorney will determine the distinctiveness of your applied-for mark.

A mark is considered distinctive if a consumer can identify the source of goods and services based on just looking at that mark. Your applied-for mark is more likely to be approved if it is unique.

What is the Spectrum of Distinctiveness?

There are many different ways to be distinctive. You can be the only one in the world with a particular talent or characteristic. You can be the only company that offers a particular product or service. Or you can simply have a unique brand identity that sets you apart from your competitors. Of course, not all unique things are created equal. Some unique things are more valuable than others, and some are more difficult to protect. When it comes to intellectual property, there are two key factors to consider for determining the value of a brand: registrability and distinctiveness.

Registrability is a measure of how easy it is to obtain legal protection for a unique thing. For example, it is relatively easy to trademark a unique name or logo, but it is much harder to trademark a unique product design. While distinctiveness is a measure of how unique a thing is. The strength of the mark is determined based on the spectrum of distinctiveness, which ranges from generic on one end, to a fanciful mark on another. The more distinctive or unique your mark is the stronger the trademark protection afforded to it will be. Be mindful that a trade dress will have to go under a somewhat different analysis.

Generic Mark

A generic mark usually describes a good or service that a business offers, like “dairy” for milk or “burger shack” for a burger restaurant. Such marks are so descriptive in nature that they cannot be afforded any kind of trademark protection, and thus the application for its registration is most likely rejected.

Descriptive Mark

As the name suggests, a descriptive mark describes a feature of the brand’s product or service. It could be describing an ingredient, quality, characteristic, purpose or use for that brand. Since descriptive terms are not inherently distinctive therefore they cannot be protected as a trademark.

However, this is not a rule set in stone. Marks which are merely descriptive can overtime acquire distinctiveness, i.e. secondary meaning through constant promotion and use in the market. Again there is a catch in here. Even if such a mark gets protection by law, the protection provided is not strong enough to be protected against third-party usage/infringement.

Arbitrary and Suggestive Marks

The best type of branding is when your company can be seen as unique. This happens when your brand is either arbitrary or suggestive. Having this type of branding is great because it catches people’s attention and makes them more likely to buy from you. The only problem is that coming up with these ideas can be difficult.

An in-house team is often necessary to create that unique or distinctive brand. However, many brands have been successful without one by building a following and developing their trademark with the help of experts like copywriters, designers, and other creatives.

An arbitrary mark uses an existing word or phrase not creatively related to the product and is not associated with the good or service that someone is trying to provide. For example, Apple, for computers, or Call Your Mother, for a bakery.

On the other hand, a suggestive mark is something that suggests what it’s trying to describe but leaves you to imagine what it might mean or relate to. For example, Jiffy Lube implies a quick oil change. Mr. Clean implies clean supplies.

Fanciful Mark

A fanciful mark, also called a coined mark, is a term without any meaning. It is completely made up by a person for their brand. Such a mark is inherently distinctive as it’s neither a generic term from the dictionary nor is descriptive of anything. Due to their nature, fanciful marks are afforded the strongest protection from the spectrum against third-party use/infringement.

Conclusion

These are some, but not all, of the things you need to be aware of when developing a distinctive mark. The trademark registration process can be long and complicated, but it’s well worth the hassle in most cases.

To help you decide whether a mark is distinctive enough to be federally registered, we’ve outlined the spectrum of distinctiveness in this post. This will give you a general idea of what level of distinction is necessary for trademark protection. Keep in mind that this is not legal advice and we always recommend speaking with an attorney if you have specific questions about your trademarks. If you want more information about how to protect your brand or need assistance applying, please don’t hesitate to contact us at Drishti Law for a free discovery call. We would be happy to chat with you about your business and see how we can help.

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