Brand Building with Trademark Distinctiveness

by Chris Way

The year is 1903. You are the newly hired Chief Marketing Officer of a new entrant into the mining and minerals industry. In fact, the position of Chief Marketing Officer doesn’t even really exist yet. Congratulations on inventing that! Your task, to create the perfect company name. Your brow furrows as you begin to ponder. Then, like lightning striking dry grass, inspiration ignites into invention and you have it! “Consolidated Amalgamated Standard Mineral”. You’ve done it! With this brand name in hand your company is assured dominance and welcomed as a titan of the industry and the era.

As you may have noticed, developing a name for a product, service, or company has become much more complicated. The days of Standard Oil, Minnesota Mining & Manufacturing, General Mills, and others as names has long since passed. This has much to do with the emergence of modern advertising and branding practices that developed in the 20th century. But I would suggest that the legal nail in the naming convention coffin came with the proliferation of the spectrum of distinctiveness.

Trademark distinctiveness is an essential principle for understanding whether the brand name you are considering can be trademarked and protected from infringement. Distinctiveness draws a line in the sand establishing an order where certain names and phrases (wordmarks) can be protected, and others cannot. As you consider the perfect name to describe your product, service, or company, you’ll want to consider several factors. Among them, a name that’s easy to remember, gives your customer a sense of what your product is, and evokes some feeling you want your customer to have or value you want them to associate with you. But as you consider these factors, you must not forget distinctiveness.

The spectrum of distinctiveness is not a creature of statute. Instead, it was cemented in 1976 in the Second Circuit Court of Appeals opinion, Abercrombie & Fitch Co. v. Hunting World, Inc., (537 F.2d 4). (A quick aside to anyone that wins a game show thanks to this bit of trivia, a shout out on Jeopardy would be lovely!) The spectrum ranks marks between those that you can register as federal trademarks and those you can’t, as well as ranking the strength of types of marks.

What is a Trademark?

To understand trademark distinctiveness, we must first understand the nature of a trademark. A trademark is any word, name, symbol, or device, or any combination these used to identify and distinguish goods and services from those created or sold by someone else. A trademark “indicat[es] the source of the goods, even if that source is unknown.” 15 USC § 1127. Just about anything thing that can be used to identify the source of goods or services can be a trademark. Images, words, made up words, colors, and sounds all can be used to identify the source of goods or services.

It is the nature of a trademark as an indicator of source that makes trademarks essential for building your brand. Trademark rights begin when one uses an identifier in commerce to identify goods or services. This is critical; there is no trademark without commercial activity. Unlike other forms of intellectual property where creation establishes rights, trademark rights begin with use rather than creation. Trademark registration does not create a trademark; it gives notice to others about your use of a trademark.

Trademark Distinctiveness

Trademark distinctiveness is relevant to your brand in two ways. First, it determines your mark’s eligibility for trademark registration. Second, it determines the degree of protection your mark may be entitled to. Thanks to the Abercrombie decision, we can classify trademarks in one of five categories of distinctiveness, ranked from strongest to weakest. These are:

  1. Fanciful
  2. Arbitrary
  3. Suggestive
  4. Descriptive, and
  5. Generic

Trademark distinctiveness is not an exact science. The same mark may be in a weak category in one context (e.g., generic) and much stronger in another. It may skirt the line between categories rather than neatly fitting into any. These nuances create opportunities for your trademark lawyer and you to work together to put your application in the best position.

Trademark distinctiveness draws a line in the sand between marks that can be registered and those that cannot. That line generally falls between Descriptive and Suggestive, with marks below that line being referred to as “inherently distinctive” and eligible for registration.

Fanciful Marks

Fanciful, arbitrary, and suggestive marks are the strongest trademarks, known as being “inherently distinctive”. These are the best places to aim as you build your brandname. Of these, fanciful marks are the strongest possible trademarks. A fanciful mark is a completely made-up word. It only means one thing, your product. Without your product that word does not exist. As a mark identifies a source of goods, a fanciful mark is excellent because it identifies you alone. Examples of fanciful marks include “Pepsi” and “Exxon”.

Arbitrary Marks

An arbitrary mark is a word that has no descriptive relationship with the product or service. In other words, it doesn’t have anything to do the brand’s goods or services. Here we can easily see how a term that could be generic in one context can be a stronger and inherently distinctive mark in another. “Apple” is absolutely a generic category descriptor if you grow fruit. But apply that name to computers, software, and related services, and it becomes completely unrelated to the goods and services. Examples of arbitrary marks include “Apple” for computer hardware and software and related devices, and “Shell” for gasoline.

Suggestive Marks

Suggestive marks are the last of the “inherently distinctive” marks. A suggestive mark implies something about the product or service rather than directly stating it. Put another way, “A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” Abercrombie, 537 F.2d at 11. Suggestive mark examples include “Netflix” suggesting movies available on the internet or “Marvel” suggesting stories that will astonish or wow the viewer.

Descriptive Marks

Next are descriptive marks. Here we find ourselves on the weak side of distinctiveness. A descriptive mark is a mark that refers to a specific product or service but identifies the product or service by plainly and openly explaining some element or detail of it. For example, “24 Hour Urgent Care”, “Delicious Eats”,  “Cloud Systems Software Design”, “Rare Book Shop”, “Virginia Small Business Accounting”, “Skillful Business Consultants”. All these describe some feature of the product or service. They explicitly state an attribute of the product.

Descriptive marks generally cannot be registered. Because they explicitly state something about the product, it is likely that this same descriptor applies to many products in the field. We would quickly run out of words necessary to do even basic marketing if only one plumber, for example, was able to call themselves “great” or “fast”.

Secondary Meaning

If you do have a descriptive mark, don’t be discouraged! I said “generally cannot be registered”. A descriptive mark can be registered and protected if the applicant can prove the mark has acquired “secondary meaning”. Secondary meaning occurs when a mark has been used for over five years or an applicant otherwise can prove that people associate the descriptive term with the applicant and its product. If you’ve been operating as “Great Plumbers of Virginia & Maryland” for twenty years, you might have a good case for secondary meaning.

Generic Marks

Generic marks are the lowest ranked and weakest of the five categories. A generic mark is a category descriptor. It describes an entire field of products or services rather than any specific product or service. Similar to reasoning limiting descriptive marks, , generic marks cannot be registered as trademarks.  Imagine the chaos if one company alone had the right to use the words “phone”, “computer”, or “consultant”.

Building Your Brand with Distinctiveness

Based on the spectrum of distinctiveness, you might be tempted to think that fanciful is always the best because it has the highest distinctiveness. A fanciful mark is strong, but strength alone is not only criteria that matters for your brand. Brand building and trademark distinctiveness exist in a careful balance.

As you build your brand name, keep this balance in mind.

The more distinctive your name is, the easier it is to have it identify you alone and the easier it is to protect the mark from imitators, but the harder it is for that mark to help people understand your product.

The less distinctive your name is, the harder it is to have it identify you alone and protect from imitators, but the easier it is for that mark to help people understand your product.

A fanciful mark will only identify you. But you’ll need to spend time and resources educating your customers to connect that mark with you and your products or services. A descriptive mark will be much easier for your consumers to understand. But it is much harder to forge an association between that mark and you alone.

Trademark distinctiveness is but one piece of the brand building puzzle. There are many variables that allow you to make adjustments to your overall strategy. You may want a mark that signals a certain level of quality, makes a customer feel a particular feeling, or any of the other factors I mentioned above. Branding and trademark strategic options are plentiful.

From a legal perspective, take time to understand how distinctive your mark is and how that affects your ability to establish rights in it.  From a marketing perspective, take time to understand how your customers will learn this mark, associate it with your goods and services, and how you’ll build your brand around this mark. The right answers for you lie somewhere in the balance between these concerns.