Trademarks and the spectrum of distinctiveness, part one


This article is for informational purposes only. It should not be construed as legal advice for any individual matter, nor does it create an attorney-client relationship between you and the author or the publisher. Please also note: this analysis considers only one portion of the overall analysis of whether a trademark can be registered, and it assumes that no other conflicts prevent the mark from registering.


When determining whether a proposed trademark is registrable and available for use in the U.S., brand creators usually focus on whether another entity is already using a confusingly similar mark for similar goods and services. That is, they check if a proposed mark is externally registrable, meaning that someone else isn’t already using the same or similar mark for a similar product such that consumers may mistake the new mark for the original item. But a proposed mark must also be inherently registrable. Inherently registrable marks identify the source of goods and services to consumers in the marketplace—the basic function of any trademark. To evaluate whether any given mark can serve that vital function, let’s talk about the spectrum of distinctiveness.

Drawn from a seminal 1976 federal lawsuit called Abercrombie & Fitch Co. v. Hunting World Inc., the spectrum of distinctiveness sets out the relative legal strength of various types of marks, answering whether a mark can serve the fundamental source-identifying function and thus whether it can serve as a trademark. The spectrum comprises four categories of marks: generic, descriptive, suggestive, and arbitrary or fanciful. However, because the touchstone principle is whether a mark is viable for use, we can classify these into just three ranks related to the mark’s capability for registration: never, sometimes, and always. In this first post of a two-part series, I’ll cover two of those sections: never inherently distinctive and sometimes inherently distinctive. Part Two of this post will cover the remaining section: always inherently distinctive.

 
Inherently registrable marks identify the source of goods and services to consumers in the marketplace—the basic function of any trademark.
 

Never inherently distinctive (cannot register)

Generic marks cannot identify the source of a product because they identify the product itself. They are never distinctive because they would effectively render competitors unable to name what they are selling. By the Abercrombie definition, “a generic term is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species.” These marks often literally name an item or are the predominant term the public uses to identify the item. Therefore, they can never serve as trademarks. For example, the term “H2O” would be generic as to bottled water, as would the neologism “smartphone” to a telephone with the built-in capabilities of a computer.

(Note, however, that the fact that generic terms cannot register as trademarks does not mean they can’t be used as product names at all. For example, Apple is free to use the name “Watch” for its smartwatch but cannot trademark “Watch” for its smartwatches. Nor may it force anyone else to stop using the Watch term in connection with any other watches, at least not on the basis of any federal trademark rights to “Watch.” The business efficacy of generic names is questionable but subject to a different breakdown than the legal one.)

An important limitation on generic marks is that a term may be generic in one market but not another. To extend the example, “H2O” would not be generic as applied to telephones, nor “smartphone” to water. So, a particular term is never universally generic, and brand strategists should carefully consider how the proposed mark will be used.

 

Sometimes inherently distinctive (may be possible to register…eventually)

A mark is descriptive, per Abercrombie, if it directly “conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” This comprises a broad catalog of marks that are not permitted registration upon initial use. Descriptive mark subcategories include those that name the geographic origin of an item, those that are primarily merely a surname, or those that otherwise only express some component of the item. Using foreign translations, alternative spellings or compounds of descriptive terms will typically not change the fact that a mark is merely descriptive.

Upon first use, merely descriptive marks are not registrable. Unlike generic marks, however, merely descriptive marks can acquire distinctiveness, maturing into registrable marks by achieving secondary meaning. An otherwise unregistrable mark gains secondary meaning when, through advertising or other exposure, it comes to signify that an item represented by the mark is produced or sold by that mark’s owner. Secondary meaning can be proven either directly or indirectly. Proving direct secondary meaning requires evidence of public recognition through use and exposure in the marketplace, often through consumer surveys or other market analysis. A mark’s owner can attempt to claim indirect secondary meaning when a mark has been in use in commerce for five years. “McDonald’s,” for restaurant services, is an example of a descriptive mark that acquired secondary meaning and became registrable; initially, it was only a person’s last name, but now it—and even the “Mc” prefix as applied to food items—uniquely identifies the Golden Arches.

Why all these rules? At the outset, descriptive marks do not identify the source of a product because anyone can list a product’s intrinsic traits without identifying the maker of the product. But over time, and with enough brand recognition, these marks can become so interwoven with the producer of the item that they identify that producer.

From a practical standpoint, choosing a merely descriptive mark with the intention of later proving secondary meaning has a few upshots:

  1. Only use a merely descriptive mark with the intent of showing direct secondary meaning if resources are available to undertake consumer research showing that the mark has become widely known among the American purchasing public. Regional notoriety or recognition within specialized groups will not cut it, so larger organizations with enhanced consumer outreach are more likely to be able to eat the costs of proving direct secondary meaning.
  2. Only use a merely descriptive mark if it will stay in use for at least five years. If direct secondary meaning cannot be shown, at least that much time must pass before indirect secondary meaning will accrue. Further, the costs and risks associated with using even a temporarily unregistrable mark are not merited if the mark won’t be in use for an extended period of time.
  3. Be prepared for extra filing fees paid to the U.S. Patent and Trademark Office (USPTO) for descriptive marks. A mark that the USPTO deems merely descriptive cannot join the Principal Register, the primary list of fully protected trademarks. Instead, the applicant can amend the application to place the mark on the Supplemental Register. The Supplemental Register reserves some limited rights in the mark, but in order to receive full benefits, another entirely new application must be filed and reviewed before the mark can be moved to the Principal Register. This doubles the filing costs and lengthens the timeline before full rights in the mark will inure to the mark’s owner.
  4. Because merely descriptive terms are more likely to come up in conversation for new, similar products that competitors may market, enforcing rights in merely descriptive marks will be harder, more frequent, and more time-consuming. Consider whether the particular mark is so vital to an overall marketing plan to justify the risk that it will chew up far more resources than originally intended.

The U.S. business landscape is full of merely descriptive marks that acquired distinctiveness and registered as viable trademarks. It may be tempting to look at these results and select a descriptive mark—after all, it tells consumers exactly what the product is. But doing so ignores the even larger examples of brand owners who had to stop using or modify their marks, at a large cost of time, money, capital, and stress. The best practice is almost certainly to avoid using marks that fall under the merely descriptive umbrella, as a small investment in creative branding up front can save a lot of headaches on the back end. 

In this Part One, we defined the Abercrombie standards and dove into the categories of trademarks that are not inherently registrable. In Part Two, we will explore the categories that are.


Perry Gattegno is an attorney and the co-founder of a fantasy sports startup set to launch in 2018. He focuses on trademark prosecution and intellectual property strategy and he collaborates with clients on projects in branding, naming, and identity. A recovering journalist, he retains a soft spot for a good story. He likes short sentences and hates legalese.