Why is Being NOT Distinctive or Merely Descriptive so Bad for a Trademark?
Trademarks on the Principal Register are presumptively considered marks of ordinary strength entitled to all protections consistent with Trademark Act 15 U.S.C. § 1051, including the evidentiary presumption that the mark is a valid mark that is distinctive (either inherently or by acquired distinctiveness) and that the mark is an indicator of source. A common law trademark has no presumptive rights and a trademark on the Supplemental Register has no presumptive rights but does have a number of advantages over common law rights.
Unregistered trademarks, trade names and marks on the Supplemental Register are not given this presumption and are not entitled to the same presumptive rights under trademark law.
The date when a business obtains common law rights in a trademark (sometimes known as “trade identity rights’) depends on the distinctiveness of the mark. “A business will obtain rights in the mark upon first use only if the mark is inherently distinctive. If the mark is not inherently distinctive, a business may obtain ownership rights in the mark when the mark attains a secondary meaning.” Coach House Restaurant, Inc. v. Coach and Six Restaurants, Inc., 934 F.2d at 1559 (C.A.11 (Ga.), 1991). Even if someone uses something as a trademark, “if it is not distinctive, the user does not have a trademark because he has no existing trademark rights.” Otto Roth & Company, Inc. v. Universal Foods Corporation, 640 F.2d 1317 (Fed. Cir. 1981).
A trademark can be opposed or cancelled by a competitor just because it is merely descriptive and they want to be able to use the descriptive words freely without worrying about infringement suits or other problems.
What is Distinctiveness? What does Distinctive mean?
The distinctiveness of a trademark refers to how easily customers identify a mark with the associated products (goods) or services, how easy it is to distinguish one trademark from another. See section below on Creation of a Distinctive Mark. If the mark uses words that are also being used by others, often because they are necessary descriptive words, the mark is not easily distinguished from other marks. For instance, someone registering a trademark with the term GREEN in it cannot stop others from calling their product or services GREEN too because it is not a distinctive term that is associated with one unique source.
Usually the term ‘distinctiveness’ is used as part of the term‘acquired distinctiveness,’ another term for secondary meaning. An applicant of a ‘not distinctive’ proposed mark who seeks registration on the Principal Register must show acquired acquired distinctiveness by establishing, through evidence of promotion, long use, advertising expenditures, and breadth of distribution or sales figures, that the public has come to recognize the proposed mark as an indicator of source. (A mark on the Supplemental Register is an admission that the term was not distinctive, at least at the time of registration. See Quaker State Oil Refining Corporation v. Quaker Oil Corporation, 453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972)).
Weak trademarks, marks that are not distinctive, are often marks that are often used by third parties, dictionary words, geographic words or other terms that are hard for any party to claim exclusive to. See Examples of Strong/Weak Marks at StrongTrademark.com.
How Does a Mark Obtain Secondary Meaning?
Secondary meaning is when the consuming public has made a link between an alleged
mark and the source of the mark. “A mark has acquired secondary meaning when it has
been used so long and so exclusively by one producer with reference to its article
that, in that trade and to that branch of the purchasing public, the word or phrase
has come to mean that the article was the first producer's trademark.” G. Heileman
Brewing Co. v. Anheuser-
The factors considered in determining whether a descriptive mark (not inherently distinctive) has achieved secondary meaning include:
(1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer as evidenced by survey or direct consumer testimony;
(2) the degree and manner of advertising under the claimed trademark;
(3) the length and manner of use of the claimed trademark; and
(4) whether use of the claimed trademark has been exclusive.
Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1358 (9th Cir.1985).
The exclusiveness factor is a problem for many trademarks that are not distinctive because what makes them not distinctive is often that common descriptive words are being used to identify the product or service in the consumer’s mind. Since the words are common, they are not being exclusively used by just one business owner.
Trademark owners can increase the link between their products or services and their claimed trademark in the minds of the consuming public by making Proprietary Claims (PC). Proprietary claims may include: using a trademark in a valid manner (see chart on Valid/Invalid Uses of Trademarks) to indicate “brand” goods or services when using the trademark in commerce in a certain geographic area (trademark must function as a mark to earn legal rights); giving notice of the trademark to the public by using notice statements such as using common law symbols for trademarks such as “TM” (for goods) or “SM” (for services) in an appropriate manner; making claims against infringers; and associating value with the mark. Seeking State and/or Federal Registration is also a type of Proprietary Claim moving the trademark outside of being protected by common law rights only.
Evidence of Secondary Meaning or Acquired Distinctiveness
Evidence of secondary meaning or acquired distinctiveness may include specific dollar
sales under the mark, advertising figures, samples of advertising, consumer or dealer
statements of recognition of the mark as a source identifier, affidavits, and any
other evidence that establishes the distinctiveness of the mark as an indicator of
source. See 37 C.F.R. §2.41(a); In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ
487 (C.C.P.A. 1975); In re Instant Transactions Corp., 201 USPQ 957 (TTAB 1979);
TMEP §§1212.06 et seq. The United States Patent and Trademark Office decides each
case on its own merits-
Strong Trademarks Come From a Strong Identity
Being able to associate a product or service with ® to designate a federally registered trademark is a strong business tool. Purchasing decisions are continually influenced by trademarks by making one product or service distinct from another. Distinctiveness is the key to Trade Identity Rights, another term for common law trademark rights. A distinctive identity indicates a high level of authenticity and quality about products and services. The International Trademark Association (INTA) in their Top Ten Reasons Why You Should Care About Trademarks calls a Trademark the Most Efficient Commercial Tool Ever Devised.
What qualifies as a Trademark? Trademarks are any word, term, name, symbol, or device,
or any combination thereof that are used in commerce as brand names, domain names,
tag lines, slogans, non-
Only distinctive elements and non-
An inherently distinctive trademark is a strong trademark. An inherently distinctive
trademark may be registered on the USPTO Trademark Principal Register, qualifies
for more protection under more federal, state and common law and is stronger for
use in business to promote authenticity and for expanding product lines. The stronger
the trademark the greater protection received from the courts. Nike, Inc. v. Just
Did It Enterprises, 6 F.3d at 1231 (C.A.7 (Ill.), 1993) quoting Squirtco v. Seven-
A trademark that is not distinctive, such as a mark that is merely descriptive or generic, is hard to protect from competitive use. The law does not allow trademark owners to take descriptive or generic dictionary words and claim them for exclusive use.
Trade Identity Rights can arise from more than just Trademarks
Trademarks are only one type of proprietary right or trade identity right in a name or term, other means of trade identification also have rights. A business owner can obtain proprietary rights in a term “by ownership of a registration, prior use of a technical "trademark," prior use in advertising, prior use as a trade name, or [ ] other type of use [that] may have developed a trade identity.” Otto Roth & Company, Inc. v. Universal Foods Corporation, 640 F.2d 1317 (Fed. Cir. 1981). Trademarks, especially federally registered trademarks on the Principal Register, merely have more statutory rights and common law rights than terms that do not qualify as trademarks (see Function As A Mark.com for more information on what qualifies as proper trademark use). A business owner wishing to oppose a trademark registration (see Published for Opposition) must successfully assert his rights over the rights of the party seeking registration whether it be by the likelihood of confusion between the term to be registered and the opposer’s rights or the right in general to oppose a registration that would be contrary to the statute such as a term that is generic, misdescriptive, merely descriptive, or any of the other grounds for refusal.
The Broadest Protection Format for Trademarks
For the broadest protection, the standard character format should be used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element. Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation. The stylized or design format, on the other hand, is appropriate if you wish to register a mark with a design element or word(s) or letter(s) having a particular stylized appearance that you wish to protect. The two types of mark formats cannot be mixed in one mark (the words used in a design mark are not separately trademarked, they can only be claimed while present in the exact design registered). A distinctive stylized format may also be registrable when the standard character format of the same word(s) cannot be registered on their own where the distinctiveness of the mark is obtained from the design rather than the word(s).
Creation of a Distinctive Mark
When creating trademarks (brand names, domain names, tag lines, slogans, non-
When creating trademarks, one essential requirement in order to be registrable on the USPTO Trademark Principal Register is that the trademark is distinctive. What is a distinctive name for the purposes of obtaining a trademark from the United States Patent and Trademark Office (USPTO) is found in the Trademark Manual of Examining Procedure (TMEP) in Section 1209.01.
Distinctiveness is the opposite of descriptiveness for trademark purposes. As the descriptiveness of a trademark increases, the distinctiveness decreases. The distinctiveness of a generic mark would be zero, incapable of distinctiveness and incapable of acquiring distinctiveness. The distinctiveness of trademarks varies along a continuum (often depending on use) from being highly distinctive (or inherently distinctive) to being merely descriptive or generic. Highly distinctive marks that are arbitrary, fanciful or suggestive are registrable on the USPTO Trademark Principal Register. Marks that are merely descriptive matter may potentially be considered to be registered on the Principal Register if they have acquired distinctiveness (see red arrow) with Secondary Meaning. Generic marks (common or class names for goods or services) are not registrable as trademarks under either the Principal or Supplemental Register. Composite marks, mark that are partly descriptive or generic and partly suggestive, arbitrary or fanciful, may be registrable on the Principal Register with the descriptive or generic part disclaimed for exclusive use.
The terms are further defined in TMEP 1209.01: “Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, EXXON) or are completely out of common usage (e.g., FLIVVER).”
“Arbitrary marks comprise words that are in common linguistic use 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 (e.g., APPLE for computers; OLD CROW for whiskey).”
“A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.”
“Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.”
“Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception 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. . . .Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. Therefore, a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable.”
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