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A fundamental principle behind trademark law and the granting of “exclusive” rights of use for trademarks in the United States is that trademarks must be distinctive. One of the primary functions of a trademark is to serve as a brand-identifier that will help the public distinguish one brand from another and help consumers distinguish the identified mark with the identified goods and services from other brands.
Over the years, various guidelines have emerged to clarify which trademarks will be considered inherently distinctive and which marks are not considered inherently distinctive, unless the owner of the mark can show secondary meaning.
Secondary meaning arises when consumers have come to identify a trademark with a certain product or services. More specifically, the trademark is said to have acquired distinctiveness. Acquired distinctiveness for a trademark may be the product of continuous use of the trademark over a healthy passage of time, extensive marketing and advertising, the notoriety and fame associated with a mark, to name a few supportive factors.
Sliding Scale of Trademark Distinctiveness à Strength of the Trademark
There is a sliding scale widely used by the Trademark Office (United States Trademark Office) which is meant to help categorize trademarks, which determines whether a trademark is even registerable or not. In a sense, this sliding scale helps to indicate how strong a proposed mark is, although it is not an absolute guarantee of the strength of the mark and other factors need to be taken into consideration also.
The first rule: generic marks are not distinctive whatsoever and should not be registerable. A generic mark is a term that the relevant purchasing public understands primarily as the common or class name for the goods or services.
To highlight the importance of distinctiveness for trademarks, generic trademarks are incapable of functioning as trademarks, because they are presumed not to be distinctive enough for the public to associate with a specific source of the goods and services. Examples of generic trademarks include: CLASSES ONLINE for classes provided via the Internet, PIZZA.COM for pizza ordering and delivery services, and LIVE PLANTS for plant nurseries.
In addition, a trademark that was once considered registerable and unique can become generic over time and lose its status as a specific “brand-identifier.” Specifically, due to the tremendous success and notoriety of these marks, the consuming public may have begun to use these marks to generally refer to any type of good or service that fits the category, regardless of whether the same source (e.g. company or individual) was responsible for providing the goods or services.
Examples of such trademarks that have become genericized (i.e. became generic over time) in the US and elsewhere include Zipper, Escalator, TV Dinner, and Aspirin.
This category of mark is considered registerable (mainly on the Supplemental Register) or in conjunction with evidence of acquired distinctiveness, but a “merely descriptive mark” is considered very weak on the sliding scale.
Trademark Examiners frequently reject marks for being “merely descriptive.” A “merely descriptive” rejection means that your mark is merely describing a function, feature, quality, or characteristic of the goods associated with your mark. Such marks are not considered to be distinctive on their face, because:
· other companies and individuals marketing the same goods and services will frequently use such terms to describe the goods and services. A general principle in trademark law is that a trademark should not be a means for monopolizing a descriptive term that various businesses need to be able to use to describe their goods and services.
· a “merely distinctive” mark is not considered distinctive enough to entitle an applicant to a presumption of exclusive use of this mark for such goods and services in all 50 states in the United States, because it is likely that there will be frequent examples of other businesses using the same terms in their marks or similar variations thereof (e.g. “Best Dry Cleaners”).
Examples of “merely descriptive” marks include “Cold and Creamy” for ice cream, because this mark is merely describing one of the characteristics of the product, and therefore is not considered likely to qualify for a distinctive trademark. Other examples include “National Bank” for a bank offering banking services nationwide, “The Ultimate Bike Rack” for a bike rack, and “ScreenWipe” for anti-static cloth used for cleaning computer and television screens (although this may also be considered generic).
Potential to Acquire Distinctiveness
The good news is that “merely descriptive marks” have the potential to develop a distinctive impression in the minds of consumers or “secondary meaning.” A classic example of this is “Best Buy” which refers to the retail stores that sell discounted consumer electronics. Initially, this mark was considered “merely descriptive,” but because the store BEST BUY has been in continuous business since at least 1982 and is so well-known by virtue of its extensive marketing and advertising, thousands of stores, and dominance in the market of retail for consumer electronics, this mark is now considered a distinctive trademark and recognizable by a sizable amount of relevant purchasing public in the U.S. and elsewhere.
“Suggestive” marks are considered stronger marks on the sliding scale and are registerable without additional proof of distinctivness. Suggestive marks are at a level above “merely descriptive” marks. Suggestive marks are registerable on their face and do not require evidence of secondary meaning or additional proof of distinctiveness to be registered on the Principal Register of the Trademark Office.
It is said that while “merely descriptive” marks describe a function, quality, characteristic, or purpose of a good or service, a “suggestive” mark requires a mental leap and imagination to associate the goods or service with the mark. Suggestive marks are those that, when applied to the goods or services at issue, require imagination or thought to reach a conclusion as to the nature of those goods or services.
Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services.
Examples of marks that have been held to be suggestive include “Microsoft”, which suggests to the consumer that the mark relates to software for microcomputers. Another example includes “Android”, which is related to artificial intelligence and smartphones. The Microsoft and Android trademarks do not outright specify that either mark relates to computers, software, and smartphones, but with imagination, the marks can be considered to have an association with these goods and services.
Arbitrary marks are considered to occupy the fourth category of trademarks and are considered very strong on the sliding scale. An arbitrary mark is one that include existing words that are in common usage in English (or other languages) but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services.
Examples of arbitrary marks include “Apple” for computers. No one would associate in a general sense “Apple” as a fruit with computers before the company began this association. Other examples include “Old Crow” for whiskey or “Galaxy” for phones. These marks used known words in an unexpected or uncommon way, and as such are considered “strong” marks with inherent distinctiveness.
Fanciful marks include terms that are made up, coined, or invented for the sole purpose of functioning as a trademark. The term(s) used in these marks are unknown in language. Examples of fanciful marks include “Pepsi”, “Kodak”, and “Exxon” as they are made up terms. Fanciful marks are considered extremely strong marks on the sliding scale.
Why It Matters: Generic, Merely Descriptive, or Suggestive
There are many reasons why a company or individual should be aware of this sliding scale of distinctiveness for trademarks.
First, generic marks are not registerable on either the Principal Register or the Supplemental Register. Further, if a mark that was filed and granted initially were to become generic with time, then the trademark can lose its registered status.
Second, the line between generic/merely descriptive marks and the line between merely descriptive/suggestive marks is considered to be rather fluid. Rationally, it is often the case for different opinions to exist about whether a mark should be categorized as being “generic” or “merely descriptive” or “suggestive.” Some marks that have been examined and approved as “suggestive” by an Examiner and given a notice of allowance are later overturned or reversed by a court or trademark appeal board as being “merely descriptive.”
Third, if a trademark Examiner determines that a mark is “merely descriptive”, such a mark is not eligible to be registered on the Principal Register without additional proof of secondary meaning. Instead, this mark is supposed to be registered on the “Supplemental Register.” If the mark that is “merely descriptive”, does have secondary meaning then that mark can be eligible for trademarking on the Principal Register.
Evidence of Acquired Distinctiveness
Companies and other individuals who have not been using a mark for very long in commerce or who have not used the mark at all and file a trademark application based on an intent-to-use often find themselves in a situation where they have a “merely descriptive” mark and not enough evidence that the “merely descriptive mark” has acquired distinctiveness.
The good news is that such applicants, in time and/or with extensive use, have the opportunity to establish that a “merely descriptive” mark has grown into mark that is distinctive and well-known to a large volume of interstate consumers. Evidence for establishing that this has occurred includes:
Passage of time- A mark that has been continuously used over a long period of time may use that length of time as evidence that the mark has acquired distinctiveness. Five years of continuous, uninterrupted use is considered the minimum number of years needed to show that a descriptive mark has acquired distinctiveness (although not an absolute guarantee it is considered strong evidence)
Marketing and advertising- Extensive efforts and money spent on marketing and advertising may be used to show that a mark is more than “merely descriptive” and that through such marketing and advertising the mark has become well-known by a large group of people in that industry.
Success of goods/services- Successful endeavors that can show large amounts of sales and profits for a particular set of goods or services is considered strong evidence that the mark has become distinctive and acquired secondary meaning to a group of purchasers.
3rd party declarations- Declarations from unbiased third parties are considered useful to establish that a mark has become distinctive (but should be used with additional proof and evidence to corroborate these declarations)
Other evidence of notoriety- any evidence that may be submitted that a mark has garnered a great deal of attention in a particular industry or field and has become well-known can help to establish the notoriety of the mark and that the mark has acquired secondary meaning in the minds of consumers.
The amount and nature of evidence that may be sufficient to establish that each trademark has recognition as source indicator or as a brand for a set of goods/services is determined on a case-by-case basis.
Disclaimer: This website is not intended to offer legal advice or to be a substitute for a consultation on a case by case basis with an attorney. The information provided above is meant for informational purposes only and may be subject to change.
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