Distinctiveness Requirement for Trademarks


What’92s the distinctiveness requirement
for trademarks? Generally, a trademark is only going to be
protectable to the extent to which it is distinctive from other marks. It allows the climate of the mark to associate
it with their brand without confusion from other marks that already exist out there. There’s a scale that the USPTO looks at for
determining distinctiveness and it starts off with arbitrary marks. That is marks that have no relation to anything
in existence, are not associated with the product in some way such as take for example
Bing or Google. These things have no descriptive or any relationship
in any way to the underlying product. So in that way, again, it’s a made-up word
so it’s just an arbitrary combination of letters thrown out there to be representative of a
brand. The next level of distinctiveness would be
a fanciful mark and this is the attribution of maybe something that is commonly understood
and is out there in the market but no one would really but no one would really associate
with this type of product or service so it still makes it relatively unique to the brand
to associate it in that way, think of Apple computers for example. Associating the fruit apple with a computing
system is really a fanciful way of presenting it especially with the unique colors that
they have so in that way, it’s not such a thing you would generally associate with it. In other situations, the next level of distinctiveness
would be suggestive marks i.e. these words or combination of words are suggestive of
what the product or service being branded does or what it relates to. It doesn’t necessarily describe it but it
does have some relationship to it. Microsoft for example, small software, so
these are words that you would associate with what the company is offering but again it’s
not necessarily descriptive of the company. So that’s the next level of distinctiveness
and to this point, as long as it doesn’t infringe on some existing marks out there and create
some level of confusion between the product and service being offered under this mark
and someone else’s product and service under a similar mark, so long as there’s no confusion
out there, then generally that is going to make the standard for distinctiveness required
by the USPTO. The next level however, of a distinctive mark
is a descriptive mark and that’s what the name or the company, the mark that you’re
trying to claim is really descriptive of what the company does. For example, Home Depot is kind of descriptive
of what the product or service being offered. Food Pantry might be descriptive again of
the product or service that you’re trying to offer in that way. So again, if it’s descriptive, in order for
it to be distinctive enough for protection, it would have to have such presence that it
achieves secondary meaning in the public. That is, if you said this name out to the
public, the public would recognize that as being the mark or descriptive trade as it
would the trademark of the business or company that’s trying to claim it. When you say the word Home Depot out there,
there’s generally an understanding, it has secondary meaning that everyone understands
that there’s no such thing as home depot but home depot is a company itself, a brand, a
mark out there so people would associate with that. It’s achieved secondary meaning. And then lastly, the lowest level of distinctiveness
is genericness and that’s where a mark is so commonly used or understood out there that
it does not distinguish a single product or service from others. It’s generic, it’s non distinctive so that’s
not subject to protection. And lots of times, companies that have even
arbitrary and fanciful marks can become generic, because their marker is so commonly used in
a way that it loses its distinctiveness and becomes generic. For example lots of people call soft drinks
period, Coca-Cola. It hasn’t reached the point of genericness
but that could be an example. For tissue papers, people often say Kleenex. Kleenex is a brand but it’s become so commonly
known with this product that it’s in many ways become generic. Chap Stick for example is a form of lip balm,
it’s a specific company but people generally refer to it as Chap Stick. Band Aid, the same way. Adhesive bandages, a band aid is a brand of
that. So it can become generic by overuse and that
way, the company loses its distinctive marking and can lost its trademark protection. http://TheBusinessProfessor.com

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