Trademarks in the US have two primary criteria for approval: they must be distinctive and used in commerce.
While these two sound straightforward, like any subject in the law, there are many nuances to consider. The requirement of trademark distinctiveness alone has caused a fair bit of confusion over the years. One recent case—The United States Patent and Trademark Office v. Booking.com—even made its way to the Supreme Court!
Distinctiveness is a delicate balancing act. Something you think is unique may seem completely mundane to someone else. On top of that, it’s a delicate balancing act. If your brand name is too quirky or unique, it distracts from your product. That is why understanding trademark distinctiveness is important. It’s not just about helping you protect your IP. It’s about helping you decide if that IP is worth protecting at all.
What is Trademark Distinctiveness?
Trademark distinctiveness is a word, phrase, symbol, or design specifically associated with a brand. It both distinguishes and identifies the company behind it. Think of McDonald’s signature golden arches. You don’t even need to see the company’s full name to connect it to the fast-food brand.
Of course, that kind of trademark recognition isn’t cheap, but then again, they’ve got a half a billion-dollar marketing budget. Most likely, your own falls a bit short of that.
That’s why as you examine trademark distinctiveness, consider how easy it will be to create brand recognition. If you don’t choose wisely, you might wind up with a trademark that’s near impossible to market.
Distinctiveness doesn’t mean a trademarked item has to be immediately recognizable to a layman. It just has to be a clear part of the brand’s identity. That’s not always a straightforward decision. As a result, there’s a well-established scale you can use to gauge how likely you’d be to receive a trademark. It covers five levels of distinctiveness, three of which are almost always enforceable and two that rarely are.
|Definition||A fanciful trademark means the term was specifically invented for use with a brand’s product or service.||An arbitrary trademark refers to a common or existing word used to describe a product or service not originally related to its meaning.||In this, the trademarked word or phrase vaguely alludes to the product or service—though it does not have to be immediately evident to the consumer.|
|Registrability||This type of trademark almost always meets the distinctiveness criteria. However, when it comes to marketing, it can be a challenge as it’s difficult for customers to remember, leading to branding issues.||This is another situation where trademark registration acceptance is relatively seamless. Again, however, there will be challenges in getting customers to remember and associate the word with your specific product.||At Bold IP, we recommend suggestive trademarks for most clients. Suggestive trademarks are registrable while also being easier for customers to remember.|
|Example||Pepsi: This word was created explicitly for the soft drink. The name itself was readapted from another product name, “Pep Kola,” after Caleb Bradham bought its rights in 1898.||Nike: The original word referred to a Greek goddess but was repurposed for the apparel company.||Netflix: This company’s name combines the internet and “flicks,” or movies.|
Rarely or Never Enforceable
|Definition||If the phrase could describe any product in the same industry, it’s considered “merely descriptive” and generally ineligible for registration.||Generic marks can refer to the generic term for a product, or a company-accepted branded phrase. The first type is never trademarkable; the second were originally, but lost the protected status.|
|Registration workarounds||Merely descriptive trademarks may be registrable only on the Supplemental Register. This documents trademarks that have the potential (after five years of continuous and exclusive use) to become eligible for the Principle Register.||None. You would have to either:
|Example||Real world examples are thin on the ground here, but think “Frozen Ice” or “Inky Pen”.||Aspirin: Originally a brand name, this has become a common word people use when talking about any product containing the product’s active ingredient, acetylsalicylic acid.|
The less distinctive your brand name is, the more trouble you will have obtaining a trademark. There have been cases where initially denied trademarks were approved later—one of which made it to our nation’s highest court.
The United States Patent and Trademark Office v. Booking.com
Booking.com was a brilliant name for a company that specialized in travel services, especially in the early days of the internet. It was simple, easy to remember, and clearly defined the purpose of the business. But, unfortunately, the United States Patent and Trademark Office didn’t agree.
Its application was denied because “booking” was considered a generic term. This was a situation that the USPTO had to deal with a lot during the explosion of internet-based businesses. They had to determine whether the addition of a “.com” served to differentiate a trademarked term enough to call it distinctive. The agency had its own litmus test for that; if the word was generic without the .com, then the addition of one did not make it distinctive. This was known as the “per se” rule.
The US Supreme Court disagreed with this policy of automatic rejection. Instead, the justices adopted a more flexible model that depended on consumer perception. Booking.com had submitted evidence of surveys showing consumers did not consider the phrase “booking.com” as generic but instead saw it as a reference to a business. The justices ruled that this was enough to prove that the term was not generic and could be trademarked. Essentially, this ruling put Booking.com and other similar internet-based companies into the arbitrary or descriptive spectrum of trademark distinctiveness.
This is why trademark distinctiveness is so tricky—the scale is not absolute. Someone who finds their initial application for a trademark denied isn’t necessarily barred from registration. They may need to submit more proof. Of course, all of this can be cut off at the pass by submitting a well-written, detailed application to begin with. Your best bet for navigating the red tape is working with an experienced US trademark attorney.
At Bold Patents, we make it easier to gain trademark registration by helping you understand how your branded asset fits into the trademark distinctiveness scale. Contact us at 800-849-1913, or complete the form on our contact page for more information. Get Started With a Free Consultation!