As the primary purpose of a trademark is to distinguish the goods and services of one source from another, a mark must serve that function to actually be a trademark. The quality of identifying the source of products or services is referred to as “distinctiveness;” a mark must be distinctive to function as a trademark.
Certain marks are naturally distinctive, and can function as an identifier of source immediately on use. Other marks need time and commercial activity to become associated with the goods or services of an entity prior to becoming distinctive. Distinctiveness is often described as a spectrum, ranging from “fanciful” marks to “generic” markis.
A brief description of the most common distinctiveness classifications follows:
A fanciful mark is usually a made up term, image or design that has no meaning prior to its adoption as a mark. For example, Kodak was a made up word without meaning prior to its adoption as a trademark. A fanciful mark will not be found in any dictionary prior to its use as a mark.
An arbitrary mark is an ordinary term, image or design that is used in a meaningless context. Apple is commonly used as an example of an arbitrary mark, in that Apple, while an ordinary word, has no relation at all to computers, software, music players, telephones, and the other equipment that Apple sells. On the other hand, if Apple decided to start selling apple juice, the mark would likely be qualified as generic.
A suggestive mark indicates the nature of a product or service it is associated with, or a quality or characteristic of the product or service it is associated with. For a mark to be suggestive, rather than descriptive, the suggestion must require an imaginative leap, and cannot directly describe the product. For example, Citibank, Q-Tips, and GreyHound are considered suggestive marks
A descriptive mark directly describes the nature of the product or service it is associated with, or a quality or characteristic of the product or service it is associated with, with no imaginative leap required. For example, World Book is considered a descriptive mark as it directly describes the product (encyclopedias) it is associated with.
A generic term is one that describes the product or service with which it is associated as a category or type. As such, a generic term cannot distinguish between competing versions of the product or service, and is said to lack distinctiveness. Some examples of generic terms are “Crushed Red Pepper” and “Fish Oil.” Both directly describe the product or service with which they are associated. It is possible for a once distinctive term to become generic due to use by the public to describe all versions of a product or service, and not just those offered by the mark user. For example, the term “Thermos” was once a trademark, but became associated with all vacuum flasks, and not just those produced by the original manufacturers of Thermos branded vacuum flasks.
Fanciful, arbitrary, and suggestive marks are said to be inherently distinctive. Accordingly, they can be immediately registered on the primary register of the United States Patent & Trademark Office. On the other hand, merely descriptive marks must acquire distinctiveness through commercial use and activity before they can be registered on the primary register. On the other hand, they can be registered on the supplemental register, which grants some rights, but not the presumption of distinctiveness that is granted by registration on the principal register.
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