Evaluating the strength of a trademark is never simple because of the many factors that could affect the enforcement of any trademark. However, we are able to at least predict the general level of protection a mark could receive by determining where the mark falls on the spectrum of distinctiveness.
Spectrum of Distinctiveness
The spectrum of distinctiveness is a simple sliding scale representing how distinct any word, phrase, logo, or other mark is for the type of product or service that the mark represents. The five levels along spectrum (from weakest to strongest) are: generic, descriptive, suggestive, arbitrary, and fanciful.
By determining where any mark falls along the spectrum, one can make a reasonable approximation of the strength of that mark. The potential strength of a mark increases as one moves from left to right along the spectrum.
Generic marks fall on the left side of the scale:
A generic mark is one that is a common name of the product or service, as understood by the purchasing public. A generic mark cannot receive protection as a trademark. For example, an apple seller cannot trademark the word “apple” to describe his fruit products–such use of “apple” would fall on the generic end of the spectrum.
Additional examples of marks that courts found to be generic include “Lawyers.com” for websites containing legal information and “Screenwipe” for wipes for cleaning computer and television screens.
The US Patent and Trademark Office conducts a two-part test to determine if a mark is generic:
- What is the category of goods/services represented by the mark?
- Does the relevant public understand that mark to primarily refer to that category?
If the answer to question 2 is “yes,” then the mark is generic.
It is possible that a mark that was once nongeneric may become generic because the public’s understanding of its meaning has shifted. Some classic examples of words that were protectable trademarks, but were found to be “genericized” (at least in the U.S.) are: aspirin, escalator, thermos, and cellophane.
A mark is descriptive if it describes an “ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services” (from the Trademark Manual of Examining Procedure). For example, “The Children’s Outlet” was found to be descriptive of an applicant’s “retail children’s clothing store services” and “Bed & Breakfast Registry” was descriptive of “lodging reservations services.”
A mark that is merely descriptive can be registered on the Supplemental Register (which means that it is not actually a registered trademark/service mark–yet). After the applicant can assert that a mark has attained special, distinctive meaning (which, in Trademark parlance, is called secondary meaning) in connection with his products/services, the mark can be registered on the Principal Register–in other words, it becomes a registered mark.
An assertion of secondary meaning can be made by submitting an affidavit or declaration to the USPTO along with a showing that the mark has gained distinctiveness through:
- Use of the mark over an extended length of time;
- Large scale advertising expenditures;
- Widespread recognition of the mark as a source indicator; and/or
- Survey evidence and market research results.
Regarding an “extended length of time,” the USPTO will accept a declaration that the mark has been in continuous use for at least five years as prima facie evidence that the mark has acquired secondary meaning.
If you are in the process of thinking of a new trademark for your products or services, it is advisable to avoid a descriptive mark.
A suggestive mark is one that requires imagination, thought, or perception to arrive at an understanding of what is represented by the mark. An incongruous word combination or coinage of previously unused terms indicate a suggestive mark. For example: the mark “Dri-Foot” is suggestive of antiperspirant deodorant for feet, “Tint Tone” is suggestive for hair coloring, and “Tennis in the Round” is suggestive for providing tennis facilities.
Suggestive trademarks are popular because of the possibility for clever wordplay, which may enhance the visibility of a mark and make it memorable. Also, consumers may be more likely to remember what type of product a suggestive mark represents once they make the connection.
A suggestive mark may be registered directly to the Principal Register and gain the benefits of trademark registration (after the USPTO examining trademark attorney has determined there are no confusingly similar marks already in use by others, of course). Suggestive marks receive a higher level of protection than merely descriptive and generic marks.
An arbitrary mark is one that has no relation to the goods/services it represents. The Federal Circuit has defined an arbitrary mark as “a known word used in an unexpected or uncommon way.” For example, a computer seller can trademark the word “Apple” to sell computer products because there is no relation between apples and computer products. Other examples of arbitrary marks include “Old Crow” for whiskey and “Windows” for computer operating systems.
Arbitrary marks are considered strong brands (assuming no one else was using your mark for similar goods/services before you started). Like a suggestive mark, an arbitrary mark can be registered directly to the Principal Register.
A fanciful mark is one consisting of a coined or invented name. A few examples of fanciful marks are Kodak, Xerox, Pepsi, and Exxon.
Fanciful marks make strong brands. Like a suggestive or arbitrary mark, a fanciful mark can be registered directly to the Principal Register.
The position of your trademark along the distinctiveness spectrum has a strong determining effect on whether you will be able to register it. It is highly recommended that you discuss potential trademark ideas with an attorney experienced in trademark law before you put them in use. Involving competent legal counsel in the selection process of a business name, brand name, logo, slogan, or the like can affect how well you will be able to enforce it in the future–and can have a real effect on the value of your mark.