Distinctiveness: Selecting a Strong Trademark

Not all trademarks are created equal. A potential mark must be distinctive enough to allow consumers to distinguish the applicant’s goods or services from the goods and services of others. When reviewing a trademark application, trademark examiners analyze where the mark falls on a spectrum of distinctiveness. The more distinctive the mark, the easier it will be to register and the broader the scope of protection.

• Generic marks are words the purchasing public sees primarily as the common name for the goods or services. These words or phrases are so descriptive they are incapable of functioning as a registrable trademark.
• Descriptive marks use words that describe an ingredient, quality, feature, purpose or use of a product or service. These marks may gain distinctiveness over time as consumers begin to associate the name or mark as having one source. Even it a mark does gain a “secondary meaning,” descriptive marks are still only afforded a narrow scope of protection.
• Suggestive marks hint at the nature of a product or service but require consumers to use some imagination to understand the connection between the mark and its associated product or service. The mark AIRBUS for airplanes is an example of a suggestive mark. Marks in this category are inherently distinctive, but it is often difficult to determine whether an examining attorney will consider a mark to be suggestive and registrable or merely descriptive.
• Arbitrary marks take a word with a common meaning and use it in connection with products or services unrelated to that meaning. Marks in this category are inherently distinctive and are afforded a broad scope of protection.
• Fanciful marks use words that have been invented for the sole purpose of functioning as a trademark and have no other meaning beside acting as a mark. Fanciful marks are afforded the broadest scope of protection but may require a business to spend more on advertising to educate consumers about what the mark represents and what to associate it with.

The spectrum of distinctiveness can be helpful when considering prospective trademarks. Distinctiveness is only one consideration, and it is a good idea to consult with an knowledgeable attorney before spending money on branding your business and your products.