Trademarks and the spectrum of distinctiveness, part two


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.


The spectrum of distinctiveness is a legal construct that helps to discern whether proposed trademarks are inherently distinctive and thus registrable under U.S. law. In Part One, we defined the Abercrombie standards and reviewed the categories that are either never or only sometimes inherently distinctive. In this part two, we will explore the categories that are always inherently distinctive.

As discussed in Part One, the purpose of a trademark is to identify the source of a good or service. Generic and merely descriptive marks cannot serve as trademarks because they are unable to serve the source-identifying function. Descriptive marks that can show secondary meaning, either through sufficient market penetration or length of use, acquire distinctiveness and become registrable. This Part Two surveys the set of inherently distinctive marks that make up the other half of the spectrum of distinctiveness: those marks that do not require proof of secondary meaning in order to identify the source of a particular good or service, and so always qualify for registration.

 

Always inherently distinctive (can always register)

Abercrombie established three groupings of marks that automatically have secondary meaning and are thus always inherently distinctive: suggestive, arbitrary and fanciful. While Abercrombie grades out various levels of distinctiveness between these groupings, these differences are academic and should not by themselves inform a decision on which type to select. Counterintuitively, even though fanciful marks are legally “stronger” than arbitrary marks, which are in turn “stronger” than suggestive marks, marks in the suggestive category best balance the business need to connect names to products and also are best to avoid certain legal risks that can afflict some marks. Regardless, for the purposes of answering the question whether a given mark in any of these categories is inherently distinctive and thus registrable, the answer remains the same: yes.

As defined in Abercrombie, suggestive marks require imagination, thought, and perception to reach a conclusion as to the nature of the goods that the mark represents. “Twitter,” for microblogging services, is a suggestive mark. It evokes an intangible quality of the services—that the length of a Twitter post matches the brevity and transience of a bird’s song. Crucially, the mark does not merely describe the service; instead, consumers must undertake a leap of logic to connect the intended meaning of the mark with Twitter’s services. That extra step of analysis separates suggestive marks from descriptive ones, which must acquire secondary meaning before they can register. The line between descriptive and suggestive marks can be fuzzy and gray, but it’s where attorneys who file trademark applications often spend the most time, constructing arguments why a mark is suggestive (and registrable) and not descriptive (and unregistrable).

Arbitrary marks involve common words whose definition is unrelated or unfamiliar to the goods or services being sold. “Apple” for computers is an emblematic example of an arbitrary mark. From a purely legal standpoint, these marks are considered stronger than suggestive marks because they are more likely to identify the mark’s owner as the single source of the product that the mark represents.

Finally, fanciful, or “coined,” marks, are terms invented solely for their use as trademarks and have no other meaning. “Kodak,” for photographic equipment, is a coined term. Traditionally, fanciful/coined marks are considered the strongest from a legal perspective because the likelihood is so low that they could be associated with another producer of a similar product. However strong they are, these marks can concurrently generate a unique legal pitfall as well as business challenges associated with arbitrary marks, too.

If you read Part One of this article, you may remember language from Abercrombie including marks that have “come to be understood” as referring to a product within the generic category, even though such marks began life as distinctive and registrable marks. This alternate type of generic mark results from a process called genericide. Genericide occurs when a distinctive mark—most often a fanciful mark but occasionally arbitrary or suggestive ones—that once identified an individual product becomes the only or predominant term for the product itself, rendering the distinctive mark generic. The terms “zipper,” “nylon,” “linoleum,” “escalator,” “teleprompter,” “app,” and “trampoline,” all began life as fanciful marks but have since become generic and open to use by all. Such marks are victims of their own success and lose their trademark rights altogether. Further, owners of marks like “Band-Aid,” “Jacuzzi,” and “Kleenex” all labor to circulate generic terms like “adhesive bandage,” “hot tub,” and “facial tissue” along with their brand names to ensure that their valuable intellectual property does not meet the same fate.

 
Genericide occurs when a distinctive mark that once identified the product of an individual user becomes the only or predominant term for the product itself, rendering the distinctive mark generic.
 

Those who coin terms that become valuable trademarks should take pains to ensure that consumers use their marks as adjectives, rather than nouns or verbs. For example, Xerox periodically publishes humorous ads referencing other genericized marks imploring their customers to use a Xerox photocopier to make Xerox photocopies, rather than to xerox xeroxes. While brand owners can’t ultimately control the public vernacular, such advertising bolsters the argument that a mark remains an indicator of the source of a product rather than the name of the product itself.

Second, and more generally, both arbitrary and fanciful marks involve terms that are in definition unrelated to the products they represent. Accordingly, they readily permit connection between the mark and the mark’s owner, since no other good faith entity would want to use a similar name to identify its own separate product. But the tradeoff is that these marks bear no meaningful relation to the product when they first hit the market, so they don’t readily permit a connection between the mark and the mark’s intended meaning. Just as a descriptive mark must acquire secondary meaning to acquire legal distinctiveness, arbitrary and fanciful marks must acquire brand equity from the purchasing public to acquire business distinctiveness. As a result, users of these marks should be ready to spend significant resources building brand recognition. Educating customers can be a large expense, with no guarantee that the marketplace will ever connect the mark with its corresponding product.

Conversely, suggestive marks—which differ from the other inherently distinctive categories precisely because they partly identify the product that the mark represents—offer a path of lesser resistance to consumer brand awareness while still ensuring inherent distinctiveness. Of the Abercrombie categories, suggestive marks best reach the objectives of the strategic and creative process. They evoke certain qualities about the product that the mark owner may want to highlight. (Food for thought: good suggestive marks will evoke the core qualities that the owner wants to express to its customer base.) Take the legal calculus out of it: suggestive marks enable deeper connections with customers and are flexible enough to accommodate brand extensions that may deliver products and services with similar qualities in new forms without making expensive changes (IHOb, anyone?).

An experienced trademark attorney and brand strategist can help to determine both whether any individual mark should be greenlit and what marketing strategy will best publicize and protect it as it and the product or service it represents mature in the marketplace. As with anything in the law, the best rule is that there is no hard and fast rule, but the right time to consider these issues is when selecting a name and developing a brand, not after many days and dollars have already passed.


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.