In my trademark search and trademark application posts, I said that not all trademarks are eligible for registration. That is one reason you should speak to a trademark attorney before filing an application. There are actually several kinds of trademarks, and only some of them can be registered. This post will look at the idea of trademark distinctiveness, and explain each of the different distinctiveness categories that a trademark might fall under.
Trademark distinctiveness is a measure of how well a trademark sets apart your goods and/or services from those of others. It looks at the connection between your mark and the goods/services it will be used to sell. If that connection is strong, like if your mark is just the word(s) that the goods/services is commonly called, then it is unlikely that you will be able to register the mark. Trademark distinctiveness is a spectrum of five categories. We will start with the least distinctive kinds of trademarks, and work our way to those that are the most distinctive.
The least distinctive class of trademarks, which can never be registered, is called generic. These are trademarks where the mark is just what you call the goods/services. If I wanted to use the mark BANANA for the sale of bananas, I could not register it as a trademark. This makes sense, because we do not want to give exclusive rights to use basic words. Any trademark can become generic, and subject to cancellation at any time. This is commonly referred to as genericide. Examples of trademarks that were later canceled for being generic include ASPIRIN, THERMOS, and TRAMPOLINE. These started off as brand names, but eventually people just referred to the products as the trademark names themselves. This is also the case with BAND-AID, FRISBEE, and KLEENEX, although these trademarks have not been cancelled yet.
The next category of distinctiveness is called descriptive. Like the name implies, these are marks that describe the goods/services with which they are sold. These trademarks are more distinctive than generic marks, but still cannot be registered. There is an exception to this rule, though. Descriptive marks can be registered with a showing of acquired distinctiveness. What that means is that when used as a trademark, descriptive marks can gain distinctiveness over time. Usually, this takes at least five years. And even then, some marks are so descriptive that they can never be registered. Remember, I said that this is a spectrum. The categories are very fluid.
Moving on, these next categories are all kinds of trademarks that can be registered. The next category, which is more distinctive than descriptive, is called suggestive. These are similar to descriptive, except the consumer typically must make a “mental leap” to connect the mark with the goods/services offered. For example, AIRBUS used to describe airplane travel is suggestive because the plane is not literally a bus. But consumers can easily picture what that name is trying to convey. Another example would be TIDE for laundry detergent.
Next, we have the arbitrary trademarks. These marks are real words with meanings. But those meanings have nothing to do with the goods/services offered. The most common example used here is APPLE for computers. Everyone knows what an apple is, and that it has nothing to do with computers. While choosing an arbitrary name may make marketing more difficult, they are one of the strongest kinds of trademarks.
Finally, a mark that is a made-up word is called fanciful. These are the strongest trademarks there are. The most common example used for this is KODAK. It is a word without a meaning, other than the brand it represents. XEROX was also a fanciful mark. However, it has become generic over time, with people using it as a verb meaning “to make copies.” That shows how a mark can go from the strongest class of distinctiveness, to something that can be cancelled.
Are You Unsure Whether Your Mark Is Distinctive Enough for Registration?
If you’ve read this summary and aren’t sure where your mark falls on the distinctive spectrum, please feel free to call me at (314) 479-3668, email me at firstname.lastname@example.org, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.