Filing a federal trademark application with the United States Patent and Trademark Office (“USPTO”) is something that often gets overlooked by small companies. However, a federal trademark registration acts as an important shield of protection for businesses and their brands. Trademarks are important for businesses as they help them to establish and maintain their brand identity in the marketplace. A trademark is a symbol, design, word, or phrase that is used to identify and distinguish a company’s goods or services from those of others. Furthermore, a trademark lasts as long as it continues to serve the trademark function, and this makes it different from a copyright or patent which eventually will become part of the public domain simply due to the passage of time. When a business registers its trademark with the USPTO, it gains exclusive rights to use the mark in connection with its products or services. However, for federal trademark protection to be granted, the trademark must be distinctive.
Distinctiveness refers to the ability of a trademark to identify the source of a product or service and distinguish it from others in the marketplace. Distinctiveness is important because it helps consumers to identify the source of a product or service, and allows businesses to establish and maintain their brand identity in the marketplace. A distinctive trademark also helps to prevent confusion and protect businesses from infringement by others who may try to use similar marks. There are several categories of distinctiveness, ranging from generic marks—which are not eligible for registration—that describe the product or service itself, to arbitrary or fanciful marks—the two most readily protectible types of marks—that have no direct association with the product or service being offered. In between these two extremes are suggestive and descriptive marks. The USPTO grants the strongest form of protection to trademarks that are arbitrary or fanciful, as these marks are inherently distinctive and have a low risk of confusion with other marks in the marketplace. Arbitrary marks are words or phrases that have no connection to the product or service being offered, while fanciful marks are made-up words or phrases that have no meaning outside of their use as a trademark. Examples of arbitrary marks include Apple for computers and Nike for athletic shoes, while examples of fanciful marks include Kodak for cameras and Xerox for photocopying machines.
Suggestive marks are also distinctive, but to a lesser extent than arbitrary or fanciful marks. These marks suggest a characteristic or quality of the product or service being offered, but do not directly describe it. Examples of suggestive marks include Greyhound for bus transportation and Coppertone for sunscreen. Descriptive marks are the weakest type of distinctive marks and describe a characteristic or quality of the product or service being offered. These marks may be registered with the USPTO, but only after the business has demonstrated that the mark has acquired secondary meaning—that is, the mark has become so associated with the product or service in the minds of consumers that it has gained distinctiveness. Examples of descriptive marks include Holiday Inn for hotels and Vision Center for eyewear.
In conclusion, distinctiveness is an essential element for federal trademark protection. A distinctive trademark helps to establish and maintain a business’s brand identity in the marketplace, and allows consumers to identify the source of a product or service. It is important for businesses to carefully consider the distinctiveness of their proposed trademarks before applying for federal trademark protection, as distinctiveness is a critical factor in determining the strength of the mark and the level of protection that it will receive.
Christopher Basile, Esq. is a partner at the Basile Law Firm, P.C. He specializes in corporate restructuring, complex commercial litigation, and mergers and acquisitions to achieve practical outcomes for clients. Gus is recognized for his work as a litigator to best counsel companies at all stages. Christopher can be reached at 516.455.1500 x115 or by emailing him at Chris@thebasilelawfirm.com
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