Trademarks are protectable only if they are distinctive.
A distinctive trademark is a trademark that “identifies and distinguishes” the relevant goods or services. This is required for a trademark to be eligible for federal trademark protection and registration at the United States Patent and Trademark Office (USPTO).
Trademark distinctiveness is typically categorized into five levels, known as the Abercrombie classification, established by Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9. This decision stated that the Court identifies five different categories of terms with respect to trademark protection. Arrayed in an ascending order which roughly reflects their eligibility for trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful.
1. Generic: Generic terms are common names for goods or services and cannot function as trademarks. For example, the word "computer" cannot be registered as a trademark for computer products.
2. Descriptive: Descriptive marks describe a characteristic, quality, or ingredient of the goods or services. Initially, descriptive marks are not inherently distinctive and cannot be registered unless they acquire secondary meaning, which means they have become associated with a specific source of goods or services in the minds of consumers.
In my experience, this is the most common reason a trademark is rejected due to a lack of distinctiveness. Cleaver names like "Vision Center" for an optometry business may be considered descriptive. This is why it is always important to do a trademark search before investing too much in any business name.
3. Suggestive: Suggestive marks suggest or imply a characteristic or quality of the goods or services, requiring consumers to use their imagination or perception to understand the connection. Suggestive marks are inherently distinctive and can be registered without showing secondary meaning. An example is "Netflix" for an online streaming service, and AIRBUS for airplanes.
4. Arbitrary: Arbitrary marks consist of common words that have no relation to the goods or services they represent. These marks are inherently distinctive and can be registered without showing secondary meaning. For example, "Apple" is one of the most common Arbitrary trademarks, and the reason it’s Arbitrary and not Generic or Descriptive is that it’s an indicator of a product that has nothing to do with apples – computers.
5. Fanciful: Fanciful marks are invented or coined terms that have no meaning outside of their use as trademarks. These marks are the most distinctive and are afforded the highest level of protection. Examples include "Xerox" for copiers and "Kodak" for photographic equipment.
Entrepreneurs and business owners should aim for arbitrary or fanciful trademarks when seeking trademark protection because these trademarks offer stronger legal protection and are more likely to be considered unique and capable of identifying and distinguishing their goods or services in the marketplace.
Please be aware that distinctiveness is only one step. Trademarks must also be available, meaning that no one else is using a mark in your area of business that is confusingly similar to your desired trademark.
Reach out to our office for assistance with your trademark.
This blog should not be considered legal advice. Please consult our office or a licensed attorney in order to get legal advice on your matter.
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