When people talk about trademark rights, they tend to think of them in binary terms. While it is true that you either have trademark rights (through use of the trademark) or not, things are more complex than that. Trademarks can be placed on a spectrum. Depending where they fall on that spectrum, they may be stronger or weaker. In other words, your trademark rights may be very broad or limited and narrow, depending on the trademark itself. The strength of a trademark is tied to its level of distinctiveness. This post will examine the idea of trademark distinctiveness and explain the different categories of trademarks based on their level of distinctiveness.
What Is Trademark Distinctiveness?
Put simply, trademark distinctiveness depends on the relationship of the trademark to the products/services for which it is used. The stronger the connection between the words and products/services, the weaker the trademark. As we’ll see, there are some categories of trademarks that are so weak that (1) they are not registerable, (2) you cannot claim exclusive rights to them, and/or (3) they do not actually function to distinguish products/services (i.e. they are not really trademarks).
Trademark distinctiveness is a spectrum of five categories. Although these categories are discrete, as you will see there are frequently times when it is hard to tell which side of the line a trademark falls on. For this reason, it is helpful to picture trademark distinctiveness as a spectrum. With a basic explanation of trademark distinctiveness out of the way, we will now go through each category of the spectrum, starting with the least distinctive category of trademarks (generic), and work our way to those that are the most distinctive (coined/fanciful).
The least distinctive category of trademarks is called generic. Actually, calling these a “category” of trademarks is really a misnomer, since generic marks do not function as trademarks. Generic terms are words that refer to the products/services themselves. If I open a food stand that sells bananas and put a big sign that says BANANAS at the top, that would be using a generic term. People would not believe that “BANANAS” is a food service brand. They would understand the sign to simply mean that I am selling bananas.
Generic terms cannot be registered as a trademark. This makes sense, because we do not want to give a particular business or person the exclusive rights to use basic words that are necessary for operation of a business. Can you imagine the scenario above if I were the only person allowed to sell bananas using the word “bananas”? That would create many problems for competing businesses.
Any trademark can become generic (and registrations for generic trademarks are subject to cancellation). This is commonly referred to as genericide. Examples of trademarks that were later cancelled for being generic include ASPIRIN, THERMOS, and TRAMPOLINE. All of these words started off as brand names, but eventually people just referred to the products as the brand names themselves, regardless of who made them. You can also argue that the names BAND-AID, FRISBEE, and KLEENEX, have also become generic, although these trademarks have not been cancelled yet.
Generic terms are the weakest of the weak in terms of trademark distinctiveness. Slightly better are descriptive trademarks, which are still on the weak end of the spectrum. As the name implies, these are trademarks that describe the products/services with which they are sold. These trademarks are more distinctive than generic marks, but still cannot be registered on the Principal Register.
There is an exception to this rule, though. Over time, descriptive marks can gain what is called acquired distinctiveness. That just means that the name, although descriptive, is now recognized as a brand and not just as a description of the products/services with which it is used. Examples of such marks include U.S. BANK, AMERICAN AIRLINES, and ST. LOUIS BREAD COMPANY.
Moving along, we are now talking about the stronger end of the trademark distinctiveness spectrum. From here on out, the trademarks function as trademarks and are registerable right from the start. They are what we call inherently distinctive trademarks.
Trademarks that are just over the threshold of being inherently distinctive (or stronger than descriptive trademarks) are called suggestive trademarks. While these trademarks have a connection to the products/services for which they are used, it is not as strong a connection as descriptive marks have. Typically they require consumers to make a “mental leap” to connect the mark with the goods/services offered. For example, the name AIRBUS is suggestive when used for air travel services because the plane is not literally a bus. But consumers can easily picture what the name is trying to convey. Other examples include TIDE for laundry detergent or JAGUAR for automobiles.
Most marks fall into the suggestive category because it strikes the best balance between trademark distinctiveness (capable of defining a brand) and marketability (does not take a lot of thought to understand what the business does). Suggestive marks can also be used to communicate something about your brand, although not in a direct fashion like with descriptive marks.
Now we are getting into some very strong trademarks. Up next, we have the arbitrary trademarks. These marks consist of real words that already exist. However, the meanings of the words 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. Other arbitrary trademarks include SHELL for gas stations or COACH for purses.
While choosing an arbitrary name may make marketing more difficult, they make for very strong trademarks with a broad scope of protection.
Finally, a mark that is a made-up word is called fanciful or coined. These are the strongest trademarks there are. Common examples of fanciful or coined trademarks include KODAK, BUICK, and TWITTER. They are words without meanings, other than the brands they represent.
You may be asking why more companies do not just make up words for their trademark, since they receive such broad protections. That is because of a more practical concern: marketing. When Twitter launched, it had to spend a ton of money on marketing. It also had to educate its users because no one knew what Twitter was back then. Compared with suggestive trademarks, there is a much steeper hill to climb when it comes to creating a brand around a made-up word.
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 spectrum of trademark distinctiveness, please feel free to call me at (480) 360-3499, 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.