Trademarks: The Spectrum of Distinctiveness

April 18, 2016

Trademarks: The Spectrum of Distinctiveness.

A trademark is anything used to identify the source of a product or service, including a word, phrase, slogan, logo, color, smell, sound, shape, package design, or a combination of these. The term "mark" is generally used to refer to all types of trademarks, including service marks. For word marks, only wording that is considered "distinctive" in relation to the goods and or services for which it issued is protectable as a mark. Word marks may be inherently distinctive, or they can acquire distinctiveness through use.

Trademarks: Spectrum of Distinctiveness graphic

The "Spectrum of Distinctiveness" helps describe strength of marks (including proposed word marks) under U.S. trademark law. The spectrum ranges from "Generic" wording (which can never be protected as a mark) to a "Fanciful" wording (which is protectable as a mark from the outset). The spectrum also informs the scope of protection afforded to a mark. In general the higher a mark is on the spectrum, the stronger it is in terms of the owner's ability to enforce its rights against 3rd party uses of similar marks.

Generic

A "Generic" word is the common name of the product or service. Generic words or phrases are so descriptive that they are incapable of ever functioning as a mark.

Descriptive

A "Descriptive" word (or words) merely describes an ingredient, quality, characteristic function, feature, purpose or use of the product or service. Also in this category are laudatory terms, geographic designations, and surnames. A descriptive word is not "inherently distinctive" and is therefore not protectable as a mark from the outset. However, such wording may acquire distinctiveness (also known as "secondary meaning") over time through use and promotion, and thereby become protectable as a mark. Even once protected, descriptive marks are generally afforded the narrowest scope of protection against 3rd party use.

Suggestive

A "Suggestive" mark suggests a quality or characteristic of the product or service, but requires imagination, though or perception to connect the mark with the product and service. Marks in this category are inherently distinctive, but it is often difficult to predict whether certain wording will be considered suggestive or descriptive. Suggestive marks have a broader scope of protection than descriptive marks.

Arbitrary

An "Arbitrary" mark has a common meaning that has no relation to the product or service on which it is used. It is a known word used in an unexpected or uncommon way. Marks in this category are also inherently distinctive, and are afforded a broad scope of protection.

Fanciful

A "Fanciful" or "coined" mark is made up, and has no meaning. It is a completely invented word. Marks in this category are inherently distinctive. Because of their distinctiveness, fanciful marks generally are afforded the broadest scope of protection against 3rd party use.

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