Inherently distinctive trademarks vs. merely descriptive marks
When you’re contemplating a name for your new business or product line, it’s common sense to avoid words that are too close to an existing trademark used for similar goods or services. However, likelihood of confusion is not the only factor to consider when adopting a new trademark. You should also consider the inherent distinctiveness of your mark and, more specifically, whether your trademark application might be rejected on the grounds of the mark being generic or merely descriptive.
Spectrum of Trademark Protection: From generic to inherently distinctive marks
Think of the availability of trademark protection as a spectrum with two opposite ends. One end of the trademark spectrum lies generic marks which are unregistrable. The opposite end comprises inherently distinctive marks, which may be protectable.
An example of a generic mark is the term “ORANGE” for the fruit. Whether or not a term is generic depends upon the meaning of the term in relation to the product. A term may be generic with respect to one type of product, but not generic with respect to others (e.g., Apple is generic for the fruit, but not for computers). It comes as no surprise that generic marks are unregistrable. Otherwise, what other word would use you use to describe the round fruit thingy that has a color mix of red and yellow? You can see how ridiculous it would be register generic words that are commonly used to identify the object or product.
Merely Descriptive Mark
A merely descriptive mark describes a characteristic of the goods or services. Mere descriptiveness and likelihood of confusion are two of the most common rejections of trademark applications. While the risk of a likelihood of confusion rejection may be reduced by first conducting a trademark knockout search, a search will not necessarily reduce the probability of a mere descriptiveness rejection. This is an area where it would help to speak to an experienced trademark attorney.
Merely descriptive marks may be capable of registration on the Principal Register if they have gained secondary meaning or acquired distinctiveness. Without such acquired distinctiveness, a merely descriptive mark might still be registrable on the Supplemental Register, depending upon the subjective views of the trademark examining attorney assigned to your application. Keep in mind that a mark registered on the Supplemental Register is not available for recording with U.S. Customs, so you should consider this factor if want to prevent the import of similarly marked goods.
Inherently Distinctive Marks
The other end of the spectrum consists of “inherently distinctive” marks which are registrable without proof of acquired distinctiveness. Inherently distinctive marks include suggestive, fanciful and arbitrary marks.
Suggestive marks provide a hint as to a particular quality or feature of the mark. The line between a suggestive mark and a merely descriptive mark is often blurry.
Fanciful marks are made up terms, i.e., words which do not exist in the dictionary.
Arbitrary marks are terms which do exist in the English dictionary, but bear no relation to the product or service.
If you’re thinking of adopting a mark for use in connection with your business, give careful thought to where your mark lies on this spectrum. Assuming you’ve found an inherently distinctive mark, you should also seriously consider at least trademark knockout search before filing in order to determine if your proposed mark might encounter conflict in the application process.