Trademarks – Spectrum of Distinctiveness | Things to Consider When Choosing a Brand or Product Name
How the heck do you choose a brand name?! As a new company, it can prove difficult to decide on your brand name. There’s a plethora of names and words already taken up and being used. For trademark purposes, having a distinct brand name (or mark) can increase the value of your company. How do you figure out a name that is distinct enough to become a registered trademark? Using what’s called the spectrum of distinctiveness can be super helpful.
Like any other classification scale, the spectrum of distinctiveness represents two extremes. On one side, you have that which is common, and on the other side, that which is truly unique. Of course, the more unique the brand name, the more distinct. And, the more likely to be registered by the United States Trademark and Patent Office (USPTO).
In terms of distinctiveness, trademark applicants should consider the full breadth of the spectrum when choosing their brand name. Know that if your proposed mark is not distinct, you’ll have trouble registering it with the USPTO. Enforcement may prove to be a struggle, too. If your mark is thoroughly distinct, both the registration process and enforcement will be easier.
To give you a better understanding of the spectrum of distinctiveness, we’ll cover each type of trademark. We’ll start from the least distinct and end with the most distinct.
The Spectrum of Distinctiveness | How to Find Success With Your Trademark Application
Generic Marks. A generic mark can’t be trademarked. That’s because the name literally represents the non-descript term for the goods or services in question. Perhaps you’re familiar with the term “generic” as it is used in the pharmaceutical industry. Companies like CVS aren’t able to trademark their generic aspirin, ibuprofen, or acetaminophen using the exact names of those anti-inflammatory drugs. Whereas the names Bayer, Motrin, and Tylenol can be trademarked. Why? They’re not the generic names of the drugs themselves. How do they protect their intellectual property? CVS has registered the word mark “CVS Health,” which covers a wide range of products, including those particular drugs.
Descriptive Marks. This type of mark is exactly what it sounds like – words that describe the goods or services. If the mark is merely descriptive, it can only be registered on the Supplemental Register. Supplemental registration puts the mark in the USPTO record system. It also gives mark owners the right to state that the trademark is registered. While that means you can sue for infringement, it’s different from the Principal Register. With the Supplemental Register, there’s no presumption of ownership on a federal level, which weakens the protection.
Merely descriptive marks may become eligible for the Principal Register after five years of continuous use. Or if they gain “secondary meaning.” That’s achieved by way of aggressive advertising and requires that consumers undeniably associate the mark with the product. So, if you were to try and register the name “Fast Bikes” for a company that sells racing bicycles, the USPTO examining attorney who reviews your application will reject the mark. But, if it were accepted to be registered on the Supplemental Register, the “Fast Bikes” name could get on the Principal Register over time (depending on how successful their marketing is).
Suggestive, Arbitrary, and Fanciful Marks Are the Strongest Trademarks
Suggestive Marks. If a mark can actually suggest to the consumer what the company’s goods or services are, then it is suggestive. To be suggestive, the mark has to engage the consumer’s imagination by way of some association inherent in the mark. Basically, if the brand name allows the consumer to understand what the goods or services being sold are, without spelling it out (descriptive), then it’s suggestive. The USPTO relies on the notion of incongruity to determine if a mark is suggestive or descriptive. Two separate words that may be descriptive individually can achieve incongruity if put together and that makes the mark suggestive. Citibank, Netflix, Microsoft, Greyhound, Jaguar, and Airbus are all examples of suggestive trademarks.
Arbitrary Marks. An arbitrary mark is a widely recognizable term used to represent goods or services that have nothing to do with that term. The most famous example of an arbitrary mark is Apple, being that they sell software, computers, and phones, not fruit or any other foods.
Fanciful Marks. This type of mark refers to words that weren’t already in existence in the lexicon prior to the trademark’s use – something that’s made up! A fanciful mark gives the owner the highest level of trademark protection. If possible, when developing a brand name, deeply consider using a fanciful mark. The strength and purpose of a fanciful mark comes from the fact that consumers will connect the brand name with the goods or service of the company and nothing else.
The Principal Register and the Supplemental Register
When in the brand or product name development stage, utilize the knowledge conveyed by the spectrum of distinctiveness. Airing on the side of suggestive, arbitrary, or fanciful marks will allow you to successfully protect your name on the USPTO’s Principal Register (no secondary meaning necessary). To get your trademark registration approved and obtain the maximum amount of protection, stick with these types of marks because of their distinct nature. Choosing a generic or descriptive mark is still an option, but these tend to weaken the amount of your trademark protection. Not to mention, the majority of generic and/or descriptive marks are vulnerable to getting rejected by the USPTO during the registration application stage.
Conversely, an applicant can state that they accept the descriptiveness determination and request to register the mark on the Supplemental Register until further notice.
Did you already attempt to register a trademark? Has the USPTO examining attorney sent you an Office Action telling you that your trademark is not distinctive enough? Don’t be mistaken and accept that as the end of the road. Applicants have the right to respond to the Office Action. When responding to the trademark refusal, you can formulate a cohesive argument to convince the examining attorney that their decision was inaccurate. Or, you can indicate that you accept the decision that the mark is descriptive, for example, and request to have the mark on the Supplemental Register for the foreseeable future.
If you have any questions about trademarks, the process of registration, or distinctiveness, contact our team at Stockman & Poropat, PLLC today! We offer a free consultation. Let us help you grow your business!
Up next we will be discussing Trademark First Use vs. First Use in Commerce.
