What Makes a Trademark Distinctive?
A trademark is a unique word, symbol, phrase, or other mark that serves as a source identifier for goods or services. It is a form of intellectual property (IP). However, a trademark can only qualify for protection if it is sufficiently distinctive. Here, our Florida trademark registration attorney provides a more comprehensive overview of what makes a trademark “distinctive” under the law.
Why it Matters: Trademark Distinctiveness
Trademark distinctiveness matters because it determines the level of legal protection a trademark can receive. As explained by the United States Patent and Trademark Office (USPTO), “it is important to have a strong trademark that is inherently distinctive.” Distinctive trademarks—which are unique and easily associated with a specific producer or source—are more defensible against infringement claims and unauthorized use. On the other hand, more generic/descriptive trademarks—those that lack uniqueness—receive little to no legal protection.
An Overview of Distinctiveness (From Least to Most)
Broadly explained, the USPTO classifies proposed trademarks into five broad categories of distinctiveness. Here is an overview of the different classifications of distinctiveness from least distinctive to the most distinctive:
- Generic (Least): Generic terms are common words used to identify a general class of products or services—such as “computer” for computers. As a general rule, these terms cannot be trademarked because they fail to distinguish the goods or services of one provider from another. You should avoid generic marks to develop your brand.
- Descriptive: Descriptive trademarks directly convey information about the qualities, characteristics, or features of a product or service. Imagine a coffee shop with the name “hot” or “fresh” in it. Without other features, it could be very difficult to protect.
- Suggestive: Suggestive trademarks hint at a characteristic or quality of the goods or services but require some imagination or thought to make the connection. These marks are considered somewhat distinctive and are granted a higher level of protection because they identify the source while not directly describing the product or service.
- Arbitrary: Arbitrary trademarks use common words that have no direct relation to the products or services they represent. One of the most famous examples is the term “Apple” as a technology computer. There is no inherent connection between the term and the goods. As such, these marks are highly distinctive and receive strong legal protection. The uniqueness comes from applying an ordinary word in an unexpected context.
- Fanciful: Fanciful trademarks are invented words or neologisms created solely to function as a trademark. These marks are inherently distinctive and enjoy the highest level of legal protection because they are entirely original and uniquely associated with a particular source. Since fanciful marks have no prior meaning, they are exceptionally effective at identifying and distinguishing goods or services in the market.
Contact Our South Florida Trademark Lawyer Today
At Perkins Law, our Florida IP lawyer has extensive experience providing trademark law services. If you have any questions about trademark distinctiveness, please do not hesitate to contact us today for a completely confidential initial appointment. From our Boca Raton office, we provide trademark representation to businesses and entrepreneurs throughout South Florida.
Source:
uspto.gov/trademarks/basics/strong-trademarks#:~:text=It’s%20important%20to%20have%20a,using%20it%20without%20your%20permission.
