There are several requirements to obtaining a trademark, such as being the first to use the mark, not obtaining the mark through fraud, continuing use of the mark, and using the mark more extensively than mere token use, to name a few. One main requirement is that the mark be distinctive.

Is the Mark Distinctive?

To determine if a mark is distinctive the mark itself will be considered, as well as the mark’s meaning and the goods or services upon which the mark is placed.

The purpose of the distinctiveness requirement is to prevent someone from obtaining a trademark in words or depictions we should all be free to use – including words or depictions we all must use in everyday life.

Examples

Imagine if a person were to trademark the word “cheese” or the picture of a classic piece of cheese. If I produce cheese must I not call it cheese? That would be unfair and impractical.

Imagine if a person were able to trademark the word “Smith’s.” If my last name was Smith, should I not be permitted to market my good or service by including my name? That would be unfair and impractical.

Imagine if a person were able to trademark the word “orange” or the color itself. Should I be prohibited from selling orange juice will orange labels, or from calling it “orange” juice? that would be unfair and impractical.

Therefore, in order to obtain a trademark on any particular mark, the mark must be distinct. It may not be generic. It may not normally be a surname. It may not be a word or mark that has become common or generic, even though it may once have been distinct. It may not be descriptive, such a colors or other adjectives.

Four Areas of Consideration

Distinctiveness is determined by a review of four types of marks:

  • Fanciful or arbitrary marks
  • Suggestive marks
  • Descriptive marks
  • Generic marks

Arbitrary or fanciful vs. Suggestive Marks

Arbitrary or fanciful marks are strong marks that are entitled to trademark protection. Suggestive marks are less strong than arbitrary or fanciful marks, but are still inherently distinctive and are entitled to trademark protection.

Descriptive

Descriptive marks are only entitled to trademark protection if they obtain secondary meaning in the mind of the consumer. That a mark is descriptive and has not obtained secondary meaning in the mind of consumers is therefore, a defense to a claim of trademark infringement. Descriptive marks are marks that identify some characteristic of the good or service to which it is attached.

Consumers can understand the connection between the mark and the good or service. “Apple” is descriptive when used to describe the juice in the trademark “CranApple.”

Use of geographic terms in connection with a good or service from that location or area are descriptive.

Secondary meaning is achieved when the public associates a mark with a single good or service even though the mark itself does not distinguish the good or service. If the mark is unregistered, the plaintiff must prove secondary meaning.

Generic

Generic marks are not entitled to trademark protection. That a mark is merely descriptive is a defense to trademark infringement. A generic mark does not identify the source of a good or service. Instead it is a common work that a consumer would use to identify a type of good or service.

An example would be use of the work “apple” to describe a fruit (yet it is an arbitrary or fanciful word when used to describe a computer company).

A word can become generic and then it loses its trademark. The word “aspirin” used to be a trademark for “acetyl salicylic acid” but is now become a generic term and lost its trademark.

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