Is The Mark Distinct Enough To Be Trademarked?
May 9, 2018

Is The Mark Distinct Enough To Be Trademarked?

General Overview

There are several types of trademarks that may receive protection under the Lanham Act, such as, service marks, collective marks, certification marks, trade name, and trade dress. Most people understand trademarks as brands and logos. The United States does not require a party to register their mark to obtain rights. A party may establish “common law” rights based on the use of their mark in commerce.

However, obtaining a federal trademark provides a number of advantages that trump common law rights including, but not limited to: (1) a legal presumption of your ownership and exclusive right to use the mark nationwide or in connection with good/services; (2) public notice of your claim of the mark; the right to use the federal registration symbol “® ”; and (3) the ability to bring an action regarding the mark in federal court. See Basic Facts About Trademarks (2016).

To obtain a federal trademark registration, a party must prove their mark is distinct or in other words, they must be capable of identifying the source of a particular good. This article will focus on achieving distinctiveness in a mark.  

Not all marks are registerable with the USPTO or eligible for legal protection. When picking your brand name, consider which trademark category will apply to your mark. The four categories include: (1) fanciful or arbitrary, (2) suggestive, (3) descriptive (or merely descriptive), and (4) generic. The category a mark falls under determines how strong a mark is. It also determines whether you can enforce your rights. The more arbitrary and fanciful your mark, the stronger and easier it will be to protect your mark. The more descriptive or generic the mark, the less likely it will be protectable.

What is a Fanciful and Arbitrary Mark?

Fanciful and arbitrary marks have no connection to the underlying product. They are inherently distinct because there is no logical connection to the product. Fanciful marks are typically words that do not have meaning in common language, whereas arbitrary marks may include a word or phrase that is well-known in meaning but bears no connection to the product. Here are some examples:

            Fanciful: GOOGLE (for online search engine)

            Arbitrary: BLOUSE (for a staple company)

What is a Suggestive Mark?

If you do not choose a fanciful or arbitrary mark, then a suggestive mark is your next best option. Just as the name implies, suggestive marks imply something about the mark.  It requires the consumer to use some imagination in order to determine the characteristic of the product or service such as shown below:

QUICK N’ NEAT (for pie crust)

            GREYHOUND (for bus services)

What is a Descriptive Mark?

Descriptive marks tend to describe the goods or services used with that mark. These types of marks are “weaker” and may be more difficult to register, if at all.  Here are a couple examples:

            WORLD’S BEST PIZZA (for pizza)

            CREAMY (for yogurt)

What is a Generic Mark?

Among the mark classifications, generic marks are the weakest. They will never legally qualify as a “mark” because they couldn’t be registerable or enforceable against third parties.  Generic marks use the everyday names for goods and services that are available for public use.  Here are some of the more common examples of generic marks:

            SMOKE SHOP (for a store that sells smoke products)

            MART (for store or market)

            RAISIN-BRAN (for raisin bran cereal)

Enforcing Trademark Protection for Suggestive and Descriptive Marks

If the USPTO finds a mark is descriptive (or worse yet “merely descriptive”), then it is not registrable or protectable unless it acquires distinctiveness. There are two ways to evaluate distinctiveness; (1) whether the mark is inherently distinct and those marks whose intrinsic nature serves to identify their particular source; or (2) whether the mark has acquired secondary meaning. It is common for applicants to choose a descriptive mark because they believe it will save advertising costs, if the consumer can immediately identify the goods or services offered. Contrarily, applicants may subject themselves to expensive litigations costs because descriptive marks may not be protectable against later users with the same or similar marks.

Proving Secondary Meaning

A mark can acquire distinctiveness if it has developed secondary meaning. If you should choose to not register you mark, then you may end up like Samara who had to defend an infringement of her unregistered trade dress against Wal-Mart. Wal-Mart Stores, Inc v. Samara Bros., 529 U.S. 205, 208 (2000)

Samara was a children’s clothing designer and found out that Wal-Mart and other retailers were selling her so-called knockoffs in their stores. The Supreme Court applied the distinctiveness test: (1) if the mark is inherently distinctive or (2) if it achieved secondary meaning --marks who “in the minds of the public, is to identify the product’s source rather than the product itself.” Id.  The court reasoned that “color” could not be inherently distinctive, neither can the unique packaging of a product. Because Samara was unable to prove secondary meaning, the Court ultimately denied her motions and sent it back to the lower court. See also, Standard Paint Co. V. Trinidad Asphalt Mfg. Co, 220 U.S. 446, 458-460 (1911) ("Rubberoid" a manufacturer who was in the market for over 12 years did not have a case of unfair competition against manufacturer "Rubbero" and was unable to prove secondary meaning).

Because filing a trademark application is a legal proceeding, you want to be sure your mark is surround by legal safeguards. For more information about inherently distinctive marks and secondary meaning, please call the attorneys at Nexio Law Firm at 949-478-6830 or visit our website at

About the Author

Imran F. Vakil is an intellectual property lawyer and business litigator. Having been attorney of record in over four hundred state and federal cases, TTAB actions, arbitrations, and mediations, Imran has expertise in the litigation of trademarks, trade dress, copyrights, trade secrets, patents, unfair competition and commercial disputes. With an excellent record, Imran has successfully generated tens of millions of dollars in verdicts and settlements for his clients.

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