4.6 The Spectrum of Distinctiveness

Trademarks fall on a spectrum of distinctiveness, from fanciful to generic. This classification system helps determine how much protection a mark receives. Fanciful and arbitrary marks get the strongest protection, while descriptive marks need to acquire secondary meaning.

Understanding trademark distinctiveness is crucial for businesses and lawyers. It impacts how easily a mark can be registered and protected. Suggestive marks hint at product qualities, while descriptive marks directly convey information, requiring different legal approaches.

The Spectrum of Distinctiveness

Spectrum of trademark distinctiveness

Top images from around the web for Spectrum of trademark distinctiveness

• 

  Section 2: Classification Approaches & Design Science of Information Systems · TokenSpace View original

  Is this image relevant?

• 

  Trademark and Patent Law – Legal Issues in Libraries and Archives View original

  Is this image relevant?

• 

  Literature Review on Product Distinctiveness Evaluation and Consumer Choice Based on Need for ... View original

  Is this image relevant?

• 

  Section 2: Classification Approaches & Design Science of Information Systems · TokenSpace View original

  Is this image relevant?

• 

  Trademark and Patent Law – Legal Issues in Libraries and Archives View original

  Is this image relevant?

1 of 3

Top images from around the web for Spectrum of trademark distinctiveness

• 

  Section 2: Classification Approaches & Design Science of Information Systems · TokenSpace View original

  Is this image relevant?

• 

  Trademark and Patent Law – Legal Issues in Libraries and Archives View original

  Is this image relevant?

• 

  Literature Review on Product Distinctiveness Evaluation and Consumer Choice Based on Need for ... View original

  Is this image relevant?

• 

  Section 2: Classification Approaches & Design Science of Information Systems · TokenSpace View original

  Is this image relevant?

• 

  Trademark and Patent Law – Legal Issues in Libraries and Archives View original

  Is this image relevant?

1 of 3

• Fanciful marks
  • Coined or invented words with no pre-existing meaning (Exxon, Kodak)
  • Strongest level of trademark protection due to inherent distinctiveness
• Arbitrary marks
  • Real words used in an unexpected or uncommon way for the goods/services (Apple for computers, Camel for cigarettes)
  • Receive strong trademark protection because of the lack of connection between the mark and the product
• Suggestive marks
  • Hint at a characteristic or quality of the goods/services without directly describing them (Coppertone for sunscreen, Greyhound for bus services)
  • Require some imagination to make the connection between the mark and the product
  • Inherently distinctive and eligible for trademark protection
• Descriptive marks
  • Communicate a quality, characteristic, function, feature, or purpose of the goods/services (Best Buy for retail stores, American Airlines for air transportation)
  • Not inherently distinctive and only protectable upon acquiring secondary meaning
• Generic terms
  • Common names for the category of goods/services (car for automobiles, book for novels)
  • Cannot function as trademarks and receive no protection under trademark law

Secondary meaning in trademark eligibility

• Descriptive marks must acquire secondary meaning to be eligible for trademark protection
  • Occurs when consumers associate the mark with a particular source through extensive use and promotion (International Business Machines or IBM for computers and technology services)
• Factors evaluated in determining secondary meaning include
  • Duration and manner of the mark's use in connection with the goods/services
  • Sales volume and market share of products bearing the mark
  • Extent and nature of advertising and promotion featuring the mark
  • Consumer surveys and testimony demonstrating an association between the mark and the source
• Once secondary meaning is established, a descriptive mark can receive trademark protection and be enforced against infringers

Suggestive vs descriptive marks

• Suggestive marks
  • Indirectly evoke a characteristic or quality of the goods/services (Airbus for aircraft, Jaguar for cars)
  • Require a mental leap or imagination to understand the connection between the mark and the product
  • Inherently distinctive and protectable as trademarks without proof of secondary meaning
• Descriptive marks
  • Directly convey information about the qualities, features, or purpose of the goods/services (Sharp for televisions, Holiday Inn for hotel services)
  • Lack inherent distinctiveness and require secondary meaning for trademark protection
• The distinction between suggestive and descriptive marks lies in the degree of imagination needed to link the mark to the product or service
  • Suggestive marks necessitate some thought or perception, while descriptive marks immediately communicate a product characteristic

Trademark Distinctiveness and Registration

• Distinctiveness is a key factor in determining the strength and protectability of a trademark
• Inherent distinctiveness refers to marks that are naturally capable of identifying a specific source (fanciful, arbitrary, and suggestive marks)
• Acquired distinctiveness (secondary meaning) is necessary for descriptive marks to become eligible for trademark protection
• Trademark classification helps organize marks into categories based on their distinctiveness
• Trademark registration provides legal benefits and is more likely for inherently distinctive marks
• Likelihood of confusion is an important consideration in trademark disputes and registration decisions