Home Trademark Conditions of Protection of Trademarks in the US

Conditions of Protection of Trademarks in the US

August 22, 2023

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This article is written by Palak Poddar, a law graduate of Banasthali University, Rajasthan. The article discusses the conditions required for the protection of trademarks in the US, along with various concepts related to them in detail.

It has been published by Rachit Garg.

Table of Contents

Introduction

Close your eyes and imagine your favorite brands fighting with each other for their identity in the market – where there is no assurance of qualities, authenticity, trust, or a touch of the love of your favorite brands, where every product blends with each other, and the ownership of each product remains a mystery. Sounds crazy, right? Well, this was the case in the United States before 1870, when there was no legal protection for trademarks available. Thankfully, in 1870, the first federal trademark law was enacted in the US after examining the need for it. After that, various amendments and rulings were made concerning trademark laws in the US. Currently, trademarks in the US are governed by the Lanham Act of 1946. This law is the most comprehensive trademark law in the world. It provides a wide range of trademark protection to trademark owners.

In today’s era, brands are more than just about their products and services. They have become a part of our identity and represent our values and lifestyle as well. But have you ever wondered what it takes for these brands to build a distinctive identity among their competitors in the market? What strategies do they use to make space in your hearts and minds? What is the magical ingredient that sets a brand apart from the rest in the market? Well, it’s that special spark that makes you identify your lovable brand even from a distance. In real life, branding is more than just a logo or slogan; it is an art by a brand where they combine creativity, strategy, and consumer psychology. It is a unique narrative that connects brands with their targeted audience on an emotional level.

The secret ingredient of branding is attached to the concept of “distinctiveness”. This is how brands catch our eye and draw our attention towards their products. Think of the iconic luxury brand “Apple” which uses a bitten apple as its logo; Nike for its slogan: “JUST DO IT”, or Coca-Cola for its red and white classic branding. These brands all use the same tactic for their trademarks, which leaves an impression on your mind.

In this article, we will be elaborating on all the concepts related to it in detail. We will also be highlighting the leading cases involved in trademark infringement matters. Stick till the end of this article to understand the concept of branding and the tricks of your favorite brands to establish a distinctive identity in the market.

Overview of trademark protection in the United States

Definition of trademark

Let’s first understand what the meaning of the term ‘trademark’ is as per the United States trademark laws. A trademark is defined under 15 USC Section 1127 as a word, symbol, phrase, design, or combination of any of these that identifies a brand’s product or services. It is how a customer recognizes that brand in the marketplace, and its identity is different from other similar products and services. The word “trademark” includes both the terms “trademark” and “service mark” simultaneously. A trademark is used to represent goods or a product, whereas a service mark is used to represent a service offered by a brand.

Registration of trademark

To register your trademark in the United States, you need to file an application with the United States Patent and Trademark Office (USPTO) with the given requirements. However, you can become a trademark user as soon as you start using your trademark for that particular good or service. If you want nationwide recognition and protection for your brand, you need to get a registered trademark from the federal government only. You can use your unprotected trademark as a local vendor, but to get the protection that spreads widely across the country, registration will be required. You can use the symbols ™ for goods and SM for services even before applying for a trademark. This will let your competitors know that you are claiming the product and service to be yours. However, you can use the symbol ® once your registration process is done.

Misconceptions about the usage of the word “trademark”

The common misconception related to trademarks is that the brand owns that particular word or phrase after getting approval for its patent from the government. Whereas, in general, that word or phrase is not protected, but it covers the meaning attached to it. It also covers how that particular word is attached to goods and services and in what manner they are linked. Suppose you own a perfume brand with the name “Calmante”, so you can only protect this brand to the extent to which perfume brands are concerned. Other than that particular field of goods or services, i.e., perfume brands in this case, you cannot restrict someone from using a similar name. A trademark distinguishes your goods and services from those of others in a similar field.

Class protection mark

To explain this concept, let’s take the example of the above-mentioned brand “Calmante” only. The brand has chosen the exclusive right to use the mark within a specific class of trademark which is perfume or fragrance. This means that the brand is protected within a specific field or specific class of perfumes or fragrances. No one belonging to the same industry can use a similar mark in that specific industry. However, anyone related to some other industry, for instance, the electronics gadgets industry can use this mark. The perfume brand and the mark will not get protection there. However, if Calmante would have been a well known mark, it would get multi class protection and no one could launch a brand Calmante in the electronics gadgets industry.

Multi-class protection mark

Now, suppose the company Calmante has chosen a multi-class protection mark; they can extend the protection beyond the class, which is specifically for perfume or fragrances. At the time of registration, the brand can choose multiple classes. For example, in this case, with perfume or fragrances, the brand chooses to opt for clothing or the organic food industry. In multi-class trademarks, protection will be broader as it is not related to that particular industry, it widens the scope of the mark. This class makes sure that the mark gets protected within the related industry specified in the class.

Common examples of trademarks

Though there are more than a million registered trademarks in the United States, here are some of the most common and easily recognizable examples for you. These trademarks could include different words, slogans, designs, sounds, scents, colors, or combinations of any of these. There are two types of formats prescribed for brands in which they can register their trademark, one is standard character format and the other is special form format.

Standard character format

This is the most common format used to register a trademark in the US. The standard character format is also known as a wordmark. In this, only the words, letters, numbers, or combinations of any of these are protected rather than focusing on their font style, size, design, or color. This format is just protecting the words themselves, regardless of how they appear, just like the iconic brand Apple Inc. has protected the usage of the word “Apple” as a trademark for Apple Inc. We know that the word “apple” denotes a fruit. Here, the meaning associated with the word can be used only for technology and electronic products such as smartphones, computers, and software by this brand. The company exclusively protected the usage of the word “Apple”; now it can be used in any type, font, style, or color. This is how the core brand identity of Apple is protected. The other example of your food companion brand KFC, “it’s finger-lickin’ good” is also a form of standard character format, where only words are used. Another example is the famous sneaker brand “Nike – Just do it”.

Special form format

This is another type prescribed for trademark registration. This format is used when there is any need for the protection of trademarks that are styled, have a specific design or logo, or have color in them. Brands can use this trademark when their main focus lies on protecting the design and styling of their brand name or logo. This will protect how the brand name or logo looks.

Some examples of special form formats are:

Like the company, Nike has a special form format trademark that combines both the word Nike and the correction mark logo.
Apple’s apple-biting minimalist logo is also a special form format trademark.
Amazon’s round curve arrow also follows special form format to show the wide range of products available on the e-commerce platform.
The Starbucks green color mermaid logo is also an example of the same category of trademark, to show the premium brand coffee experience.
Golden arch of “M” in McDonald’s logo is also an example of special form format mark. The company uses the first letter of brand name in a special format which creates its unique identity.
The brand Coca-Cola also has a unique style of mark. They uses the word “C” in a curling way which sets them apart from other identity in the market.

Conditions for protection of trademarks in the US

To get trademark protection in the US, two basic requirements need to be fulfilled to be eligible for trademark registration. Meet these requirements, and you will be able to get a successful trademark, establish your brand identity, and safeguard your rights in a competitive marketplace. The first is that it must be used in commerce, and the second is that the trademark must be distinctive. Now let’s understand each one of these requirements in detail, one by one.

Use in commerce

The first and essential requirement involves a trademark to be used in commerce. It says that the trademark owner has to be the first to use that mark for that particular good or service, though the exception applies in cases where the applicant has already applied in some other foreign country. The term “use in commerce” is defined under Section 45 of 15 USC Section 1127 as a mark used in commerce or which should be registered with a bona fide intention of being used in commerce. The mark should be either in use in commerce at the time of filing an application or used in good faith shortly. The mark should be used in the ordinary course of trade with bona-fied intentions. It should not just be for merely reserving the mark. In the context of use in commerce, it works as evidence that the mark is not just an idea or concept but is used as a source identifier for specific products or services. There are two ways in which this requirement can be satisfied:

Actual use in commerce

To fulfill this requirement, the mark should be used on the products themselves or in connection with services offered. The mark should be placed on a product, its packaging, or labels. In the case of services, the mark should be displayed in advertising materials or promotional activities associated with that service.

Intent to use

In cases where your product or service for which the mark is to be used is not ready, you can still obtain a trademark. You can file an “intent to use” trademark application with the USPTO to obtain a trademark for a product or service that has not been commercialized yet. In the application, you need to show the intention to use your mark for commercial purposes once the product or service is ready. However, the approval, in this case, is also subject to the patent and trademark offices of the United States.

Distinctiveness

Distinctiveness is one of the essential requirements to register a trademark in the United States, as per US trademark laws. Even though the mark can be used in commerce for a very long time, the USPTO can still reject the application and refuse to grant the trademark based on the mark not being distinctive. A trademark is eligible for federal protection only if it is distinctive. This feature distinguishes the goods and services of a specific company from those of others and identifies them as their own. There are different levels of distinctiveness. The more distinctive your mark is, the higher your chances of getting a trademark registration.

Trademarks are protected only if they are distinctive; we have heard this throughout the reading. But what exactly is distinctiveness? What are the criteria to determine it? What is the importance of having it? What are their types? Let’s understand all this elaborately.

What is distinctiveness

Distinctiveness is a feature that determines how the products and services are different from those of other companies in the market. It is measured by how well the mark defines the source of products and services. The more distinctive the mark is, the stronger it is for you. Distinctiveness helps you in recognizing your favorite brand’s products and services and helps you make informed choices as to which brand you should trust.

Section 2 of the Lanham Act, also known as 15 USC Section 1052 specifies the requirements for the registration of a trademark in the United States. This Section specifically mentions what types of marks are eligible for trademark registration and what types are not. It also focuses on which marks are prohibited and which marks are not.
This Section prohibits the registration of marks that contain:

Any immoral, scandalous, or deceptive matter;
Disparage or falsely suggest a connection with a living or dead individual;
A negative comment on an institution, belief, or national symbol;
Geographical indications in connection with wines or spirits;
Official flags, coats of arms, or other insignia of the United States or any other state;
The name, signature, and portrait of a deceased person of the US during the life of their widow, except if the widow permits;
Resemblance of the existing mark;
Previously used marks in the US that caused confusion, mistake, or deception.

Benefits of a distinct trademark

Every business should choose a distinctive mark. The distinctiveness of a trademark can be useful for a business in many ways, such as building trust with customers, establishing the brand in the market, and many more. Let’s understand what the benefits of choosing a distinctive trademark for your brand are in more detail:

Gives brand recognition

A distinctive trademark is easily recognizable and memorable. Thus, it will stay in customers’ minds for a longer period of time. When customers see that product or service for the next time, they will easily recognize the brand because they have seen the mark before. This will help them identify the source of that particular product and service, and strong brand recognition will be established in the market. This will give the brand loyal customers, repeated business, and also words of mouth referrals. It also helps to create brand loyalty and add value to the business.

More chance of being registered with USPTO

The United States Patent and Trademark Office (USPTO) is more likely to register a brand with higher distinctiveness than a lower one. As these brands are easily recognized among customers, they can increase revenue circulation in the economy. Since these marks will help the customer easily identify the source of goods and services, thus, the registration of trademark will be granted.

Creating brand differentiation

There are thousands of brands available in the market, offering customers similar goods and services. The distinctiveness of the mark will help the brand stand out in the marketplace with brands offering similar products and services or with its competitors in the market. It helps in finding differentiation between brands by highlighting their unique offerings and values associated with them that leave a long-lasting impression.

Helps building consumer trust

A distinctive trademark is more likely to gain the trust of customers, as customers associate distinctive trademarks with quality, reliability, and authenticity. A brand must create trust with its customers, as this can increase the number of repeat customers and also increase sales and profit for the company. A strong and well-established brand is highly trustworthy, as it is believed that they don’t compromise on the quality of their products or services. The customers think that these brands have to maintain their reputation in the market so they can meet their expectations without compromising quality.

Get legal protection and enforceability

A distinctive trademark gets stronger legal protection from the patent and trademark office concerning its unauthorized usage and infringement. Once a trademark is registered, nobody other than the actual owner can use it without permission. A registered distinctive trademark is enforceable against the infringer. The trademark owner can take legal action against the person using it unauthorizedly. Inherently distinctive marks get protection immediately, while non-inherently distinctive trademarks get protection through the secondary meaning attached to the mark. Only the trademark owner has the right to use the mark in commerce.

Prevents consumer confusion

The distinctiveness of trademarks helps prevent confusion among consumers in the marketplace. A distinct trademark helps in identifying the goods and services of a particular brand, and consumers can focus on that brand only rather than having a misconception about similarities between the other brand’s goods and services. By avoiding confusion, consumers can make informed decisions, and brands can protect their reputation while building trust at the same time.

Global expansion

When a business uses distinctive trademarks, it is highly effective during times of global expansion. In global expansion, companies expand their business operations, reach beyond the national market, and try to capture the markets of other countries. If the brand already has strong recognition in one country, there is a high chance that it can grab other markets. Distinctive trademarks can get legal protection easily as the business is already established in its home country, so they can serve as a foundation for seeking trademark protection in other jurisdictions.

Licensing and brand partnership

A distinctive trademark can open up the opportunity for the brand to sell its licensing or engage in brand partnerships with other brands. This can help in gaining additional revenue for the brand by selling the license of the trademark in exchange for royalty or commission from other brands. Businesses can also license their trademarks to other companies for the use of complementary products and services. This collaboration can help both parties leverage each other’s brand equity and further expand their market reach.

How to ensure distinctiveness of a trademark

Registering a distinctive trademark provides legal protection and safeguards the reputations of the brands. But to get trademark distinctiveness, US trademark law has given some guidelines and strategies that strictly need to be followed. Here are some tips that ensure distinctiveness for your trademark:

Choose an inherently distinctive trademark

Selecting a strong and unique trademark is very important. You should choose an inherently distinctive trademark. This means that your mark should not be descriptive of the products and services your brand is offering and should not contain generic meaning. These marks are considered weak; rather, you should use fanciful or arbitrary marks such as “Apple” uniquely used for selling computers, electronics and their parts.

Conduct an extensive trademark search

Doing thorough research to find out if any business is using similar or identical marks to yours is important, as this is the most common ground on which applications from the patent and trademark offices get rejected. This can increase confusion among the customers, as they will perceive your goods and services to come from the same source as another’s goods and services. This will also help in the prohibition of existing trademark owner’s rights from infringement.

Register your mark with USPTO

The USPTO is the authority that grants legal protection for your trademark. Trademarks with distinctive marks will get accepted by the patent and trademark office quickly. This can help you in multiple ways. Since your mark will already be listed with the USPTO, anyone searching for it will find your mark listed. This will prohibit the person from using your mark. It will also be easy to prove in federal court that you own the mark and can claim compensation in case of infringement of your trademark rights. By having your mark registered, you can also get the benefit of using your mark as a licensing option.

Use your mark extensively

You need to use your mark extensively to acquire distinctiveness. Using your mark again and again will give your mark a secondary meaning. This secondary meaning occurs when a customer associates the mark of a brand with particular goods and services that the brand is offering. It is evidence that proves the mark to be linked with its specific source of product and service, from where it is coming. This will also increase the chances of registration with the patent and trademark offices. You can use your mark consistently on product packaging, labels, and promotional and advertising banners. This will leave an imprint of your mark on your consumers minds. The more visual it is to them, the more likely it is to get stored in their subconscious mind.

Avoiding misleading and confusing marks

Make sure that you are using a mark that is not misleading or creating any confusion in customers’ minds about goods and services. As per US trademark law, if any mark is giving confusion to the customer, it is likely to be ineligible for registration or legal protection from the government. The courts and USPTO thoroughly examine whether the mark is confusing in design or not. This examination considers several factors, such as similarity in sight, sound, and meaning of the mark. Any mark that sounds similar to the existing mark is likely to cause confusion, mistake, or deception among consumers regarding the source of origin for products and services. The mark for “Apple” as used in the electronics industry is likely to be similar to the mark used in the food industry.

A spectrum of trademark distinctiveness

As you know, a trademark is connected either with a product or a service, depending on what your brand is offering. That product or service has to be specifically related to the brand. You cannot use a word, symbol, phrase, or design without identifying what your brand is offering. You need to mention what your brand is offering to its customers—goods, services, or both. Not all trademarks are equal. Yes, you heard it right. Some marks give more protection to your brand, while others give less. To determine which gives more protection and which gives less, trademark distinctiveness is divided into two specific categories. One is an inherently distinctive mark, and the other is a non-inherently distinctive mark. This difference is based on the initial level of distinctiveness that your mark carries at the time of filing your trademark application.

This spectrum of distinctiveness of trademarks was first introduced by the United States Court of Appeal for the Second Circuit in 1976 in the case of Abercrombie & Fitch Co. v. Hunting World Inc. (1976). The Court has defined the classification of trademarks based on distinctiveness. It ranges from “fanciful mark” which is inherently unique and has a strong identity, to “generic mark” which is not distinctive at all and also not eligible for trademark protection. Now, let’s understand each one of them in detail.

Inherently distinctive marks

Inherently distinctive marks are strong trademarks that are quickly accepted by the USPTO. This type of mark has a unique quality that is capable of identifying the source of goods and services. These marks get a higher protection level since they are strong and easily recognizable. It prevents others from copying or using the same mark that is protected without permission. Now there are three different levels of distinctiveness based on the level of protection they are providing and their features. These categories are specifically defined under Section 2 of the Lanham Act, (15 USC Section 1052) which accepts applications based on inherent distinctiveness. These are fanciful, arbitrary, and suggestive marks.

Fanciful marks

Fanciful marks are also known as coined marks or invented marks. These are the words that are invented or created to identify a particular brand’s goods or services. These words don’t have any prior meaning attached to them. You will not find the meaning of these words in the dictionary. This mark has the highest level of inherent distinctiveness, which also provides higher protection. The more the word is unrelatable directly to the nature of goods and services, the higher the chances of getting it noticed by the customer. You can find examples of fanciful marks in almost every industry that you can think of.

Famous examples of fanciful marks

Pepsi: The world’s leading beverage company’s brand “Pepsi” is a classic example of a fanciful mark. There was no meaning to the word “Pepsi” before the brand came into existence. The brand has given meaning to it, and now every time someone hears this word, it immediately resembles carbonated soft drinks. The name was given by Caleb Bradham, the inventor of the drink, in 1898.

Kodak: A renowned brand for producing imaging products, was introduced in 1888 by founder George Eastman. The word “Kodak” has no prior meaning before the brand starts making its name in the photography industry, commonly known for its films, cameras, and imaging products.

Exxon: Another big example from the energy sector is Exxon Mobil Corporation. The word “Exxon” has no meaning; it is an invented word, giving meaning to a word regarding a multinational oil and gas corporation.

Google: Well, if you don’t know, you will be surprised to know that the most widely used search engine known for its internet-related searches and products is also an example of a fanciful mark. The word was invented by the founders of Google Inc., Larry Page, and Sergey Brin, after getting inspiration from the word googol, which represents the word 1 followed by a hundred zeros.

Rolex: The word “Rolex” was coined by brand founder Hans Wilsdorf in 1908. It had no prior meaning before the brand established its mark, and now it is well known among people for making its luxury watch pieces. Every time someone hears this name now, the person gets an impression of a high-quality watch manufacturing and selling brand.

Characteristics of a fanciful mark

Let’s understand what the characteristics of your mark should be to determine whether it’s a fanciful mark or not:

Inventiveness

The mark should be invented with the imagination of the creator or inventor. No prior existence of the word should be there. It can be inspired by other sources or words, but it doesn’t have to have existed before the brand existed. These words have no usage in a dictionary or in any language. These are the words creatively invented by using combinations of different words, sounds, or letters uniquely and originally.

Distinctiveness

The mark should be highly distinctive and have no association with the goods or services the brand is offering or is going to offer. These should be quickly recognizable words so that they can effectively identify the source of goods or services.

Strong protection

Fanciful marks provide the highest level of protection. They are easily recognized by the public, and they will likely get registered with the USPTO without any hindrances. As these marks are strong, they also received a higher amount of legal protection from the government, making them more secure and preventing others from copying them.

Non-Descriptive

Fanciful marks are non-descriptive. Simply put, descriptive marks are those that convey directly the goods and services of a brand; fanciful marks do not do it. They are just the brand name; in themselves, they have no meaning.

Arbitrary mark

Arbitrary marks are those words that were previously in existence but are now used in a unique way to represent the brand’s goods or services. It is a word that has no relation to the products or services the brand is offering, yet it is attached to the mark in such a unique way that it easily becomes the source for identifying the goods or services with that mark. These marks are considered inherently distinctive and get protection from the government.

Characteristics of arbitrary mark

Let’s understand the different characteristics in an arbitrary mark that make the mark inherently distinctive:

Existing words

The common requirement for an arbitrary mark is that the words should have previously existed with some meaning attached to them. Now it has been used in such a unique way that even if there is no relation between that word and the products and services offered by the brand, it still bears a resemblance to the brand. The fact that it is not relatable to what brands are offering makes it unique and indistinguishable.

Non-descriptive

Just like a fanciful mark, this mark should also be non-descriptive. The chosen word should not be non-relatable to the features, characteristics, or functions of goods or services. It serves as only the brand’s identity and nothing else.

Unique use

The other main characteristic of this mark is that it is used to uniquely associate it with products and services that the brand is offering or is going to offer. This uniqueness of the mark is a memorable source indicator.

High-level protection

Choosing an arbitrary mark will give you protection from the trademark protection authority in the US, which prohibits copying or resembling your mark. It also provides compensation to you in case of infringement of your mark and additional damages along with it.

Famous examples of arbitrary marks

Apple: The most famous and iconic brand example of an arbitrary mark is “Apple”. The word has no direct connection with the brand or the products or services the brand is offering, yet the brand chooses to use the word “Apple” to represent the brand for goods associated with computers and electronics, making it unique and remarkable.

Amazon: Another example of this type of mark is “Amazon”, which is the leading e-commerce platform and technology company. Amazon is the longest river in the world; the founder has taken the word from that source and associated the word with the brand. Even if the brand has no direct relation with the word, people still recognize it by that name.

Dominos: Your popular pizza brand is also an example of an arbitrary mark. The original meaning of the word “dominos” is very different and is not in any way connected with the pizza or food delivery platform. The brand uses the word “dominos” to attract customers so that they get fascinated with the name and quickly associate it with food, or more specifically, with pizza. The brand built a strong association with fast and effective pizza delivery. Now we are all aware of its dominant position in the marketplace.

Nike: The original meaning of the word “Nike” is the name of the Greek goddess of victory. According to Greek mythology, the word Nike depicts the goddess of victory, speed, and strength. The footwear company uses the word to represent the brand in a unique way. The vision perfectly aligns with showing the strength and victory that people can achieve or want to achieve.

Ford: Similarly to the others, the meaning of the word “Ford” was different from how the brand was depicting it. The name Ford now denotes the world’s oldest and most recognizable brand of automobile manufacturer. The brand is a symbol of automotive innovation and mass production. In the company’s success and building the brand, the word “Ford” has played an important role.

Suggestive mark

As the name itself has the word “suggest”, the suggestive mark is a mark that suggests the quality of products or services of a brand not directly but in an indirect manner. This mark does not directly describe the character, feature, or quality of the products or services it represents. Suggestive marks make consumers use their consciousness to make a connection between the word used as a mark and the product or service. If the mark is something that stimulates the mental leap of a person to create the link, the mark is said to be suggestive. These marks are also considered inherently distinctive marks and are eligible to get protection from the government.

Characteristics of suggestive marks

Some of the characteristics of suggestive marks that should be there to get protection from the government are as follows:

Hint of quality

Suggestive marks provide hints about the quality of products or services associated with the brand. A hint is important to let customers think in many ways about the mark of a brand and get their attention. The word used as a mark and quality of product or service, should be used in such a way that customers should be able to connect the dots between them.

Invoking creativity

This type of mark invokes creativity among the customers. The unique feature of the mark that gives only a hint and does not disclose the direct relation between the words makes it mind-stimulating that customers can go beyond their imagination and come up with some thoughts with their creativity. This somewhat triggers their minds and emotions. This makes the customer think more about the mark and deepens the level of engagement, making it interesting.

No direct relationship

A suggestive mark specifies no direct relationship between the word used in the mark and the quality of the product or service the brand is offering. However, there are indirect relationships between the mark chosen and the product or service offered by the brand. This characteristic of suggestive marks makes them different from descriptive marks, which directly convey the quality of a product or service.

The lower level of distinctive

Suggestive marks possess some level of distinctiveness, but since they are not invented or used arbitrarily, they are less distinctive than fanciful marks and arbitrary marks. They involve a medium level of distinctiveness but are still eligible for trademark protection. To make the mark stronger, choose a fanciful or arbitrary mark. Invent the word you are using or use an existing word in a non-relatable way.

Common examples of suggestive marks

Netflix

The most popular brand, Netflix, is an example of a suggestive mark. The word “Netflix” was founded by the founders of the company in 1997 for streaming videos and video rental companies. The word was derived from a combination of two words, “Net” and “Flix”, where net signifies “internet” and flix means films or videos. It is a slang term used to show a hint of entertainment content available on the internet platform without explicitly describing it.

Jaguar

A famous automobile brand offering Luxury cars chose the name “Jaguar” in the year 1985. The word “Jaguar” shows the wild character as the animal who kills with a single blow, showing the fierce character of an animal. Here, the brand, by using this word, represents speed, grace, and elegance, which perfectly represent the brand in a way that it stands out in the market from its competitors.

Coppertone

If you are a fashionista, you must be aware of the brand “Coppertone”. The brand adopted its name in 1944, which represents sun care products, most particularly lotions that block sun rays and protect them from harmful rays coming from them. The original meaning of the word “Coppertone” represents the reddish brown color. By using this word, the brand perfectly sets the mark that they are protecting people from beautiful tanning.

Twitter

One of the leading social media platforms “Twitter” is famous for providing a platform where people can share their thoughts, news, and updates in a single message called a “tweet”. The platform suggests the idea of birds chirping or tweeting, which aligns the link between the platform’s short, concise, brief, and rapid-fire messages.

Starbucks

The world’s famous luxury coffee house is also an example of a suggestive mark. The original mark is based on a maritime theme, wherein it refers to the name of the first mate in Herman Melville’s novel “Moby-Dick”. The idea behind choosing this name was to show the richness of the history of coffee with the sense of adventure associated with it by exploring the world to source the finest coffee beans.

Factors determining inherently distinctive trademarks

Various factors determine whether the mark is inherently distinctive or not. These factors carefully examined the qualities of the mark to determine whether it gives protection or not, and if yes, then to what extent. The factors include:

Creativity and uniqueness

The mark should be creative and contain a unique character. Marks that are invented, coined, creative, and used in such a way that they are non-relatable to the goods and services but easily helpful in representing a brand.

Pre-existing meaning

Marks that are different and have no previous existing meaning attached to them, not even with the industry or goods or services, are considered inherently distinctive marks. These words have no meaning; they are used just to grab the attention of the users.

Descriptiveness

Marks that describe goods and services to the best of their abilities are not considered inherently distinctive. Descriptive terms don’t capture the user’s attention; therefore, they are not considered distinctive.

Imaginations and suggestions

Just like a writer knows what specific words they should use to connect with the reader, this is somewhat similar. The mark should indirectly show some characteristics of a product or service, or it can also give a hint about them. The use of the mark will be in such a way that the reader can easily understand with his imagination, the connection between a distinctive mark and a product or service.

Consumer perception

Consumer perception is an important factor in determining whether a mark is inherently distinctive or not. It is all about how consumers see it and feel about the same. If a consumer sees a mark and easily associates it with goods and services of a particular brand, the mark is good to go on the market as an inherently distinctive mark. Similarly, if it is the opposite, then you need to work on your mark and make it stronger.

Commercial use

The use of marks previously for commerce is also an important factor to be considered. If the product or service has already been in the market, people will be likely to associate the same with the brand mark. Commercial use will enhance the chances of having your brand registered with the USPTO.

Non-inherently distinctive marks

Non-inherently distinctive marks are the weakest category of trademarks that do not convey the source or origin of the products or services of a brand. These marks are not strong enough to get protection from their competitors, so they are less likely to be registered by the USPTO. Even if you submit your application, you need evidence to prove that your mark fulfills the eligibility guidelines and conditions for the protection of a trademark in the United States. Unlike inherently distinctive marks, non-inherently distinctive marks lack distinctiveness; therefore, there is no recognition of this type of mark among the people. If trademark owners want to protect the brand, they need to provide evidence such as sales figures, advertising expenditures, customer surveys, and testimonies associated with the brand name to the USPTO. There are three levels of non-inherently distinctive marks, they are descriptive, marks with secondary meaning,and generic marks. Let’s understand each one of them briefly.

Descriptive mark

Descriptive marks are the type of non-inherent distinctiveness that specifies the products or services directly without identifying and distinguishing the source of the goods or services. These marks directly describe the character, quality, feature, ingredient, function, or purpose of the product or service a brand has to offer. It uses common words or phrases that easily convey specific information about products or services attributed to the brand itself. They are not qualified to be registered with the USPTO without providing any additional evidence associated with the product or service’s brand value, such as sales receipts, advertisement costs, authentic customer surveys, or testimonials. If you want to avoid rejection from the patent and trademark office, you can choose a much stronger and inherently descriptive mark, such as a fanciful mark, an arbitrary mark, or a suggestive mark.

Characteristics of descriptive mark

There are some common characteristics of this type of mark. Let’s understand them briefly:

Direct description

Descriptive marks directly describe the quality of the products or services the brand is offering. It contains straightforward information that identifies goods or services directly, leaving no room for any other interpretation or ambiguity. They are made up of common words that are associated with key attributes of a product.

Weak distinctiveness

Descriptive marks have no inherent distinctiveness properties. Due to this, the consumer is not able to associate these marks immediately with the source of the product, service or brand name associated with it. A stronger distinctive mark should be one that, when it appears in front of a person, the person can easily resemble the mark with its source.

Initial rejection

Initially, when an application for a non-inherently distinctive mark is filed, it is likely to get rejected by the trademark office. As distinctiveness is the primary requirement to be eligible for trademark registration, in the absence of it, the primary application will be rejected. However, the description marks may get approval and protection from the US trademark office based on an explanation and further evidence to prove the matter.

Need for secondary meaning

This mark can be eligible for protection and approval by the trademark office if it acquires secondary meaning through extensive use. A mark acquires secondary meaning when it is used again and again for commerce and the brand’s name gets imprinted in the customer’s mind.

Common examples of descriptive marks

Here are some common examples of descriptive trademark names whose applications have been rejected due to a lack of distinctiveness in their names. Let’s see such names as:

Quick and efficient delivery services

The brand went to the trademark office to register its mark and get protection from the delivery company. The mark shows the speed and efficiency of the delivery service company; therefore, it is ineligible for trademark protection.

Affordable shoe company

The name itself says that the company sells affordable shoes. Since there is no unique invented word used and the name is describing the product that the brand is offering, which is shoes here, along with its features, which are affordable here, the product becomes ineligible for registration and protection of a trademark.

Cold and refreshing beverages

Here, the brand itself tells the customers that it is making cold and refreshing drinks. This leaves no room for mental stimulation through which customers can connect with the brand. Therefore, this mark also becomes ineligible for the protection of a trademark.

Bed and breakfast registry

The name “bed and breakfast registry” describes the service offered by the brand easily, which is booking reservation services for meals. As the brand name directly tells about the offerings of the brand, it becomes non-distinctive and therefore ineligible for registration.

Streaming news

The name “streaming news” is likely to be registered as a trademark. It will be rejected as the name itself clarifies the product and service description along with the usage of the word that describes the feature associated with it, which is here “streaming”.

Acquired distinctiveness (Marks with secondary meaning)

Acquired distinctiveness, which is also the mark that acquired secondary meaning, refers to the mark that was initially descriptive but, with time and constant usage, acquired distinctiveness. In simple terms, a descriptive mark, with constant use, becomes recognizable to people. It has not been distinctive since the beginning, but over time, it sticks in the mind of the consumer. These marks have a unique identity and significance that goes beyond their literal or descriptive meaning, as they are used extensively. The mark is now imprinted in the minds of consumers or customers.

Characteristics of acquired distinctiveness mark

Initially descriptive

The mark was initially descriptive. This should describe the characteristics of goods or services. These terms directly talk about the goods or services of a brand rather than specifying the source of those goods or services. This character should be from the beginning of when the mark existed or its existence.

Consumer recognition

Another important characteristic of this mark is that, after consistent use, marketing, and advertisement, the mark becomes a source of recognition among customers, with which they can easily associate. After extensive use, it becomes imprinted on the customers’ minds. The customers recognize the mark as a source of product or service now.

Development of distinctiveness

As this mark was initially descriptive, it developed a level of distinctiveness that made it a strong mark. Over time, the mark acquires a secondary meaning that transforms the identity of the brand. This transformation and development of distinctiveness make the brand remarkable and eligible for protection.

Exclusively association

Marks that acquire secondary meaning over time are strong. It is associated with a single brand. It establishes a unique connection between the acquired mark and the single source of the brand, where the product and service are coming from. Consumers perceive the brand mark as an assurance of their favorite quality, reputation, and origin that sets them apart from their competitors in the marketplace.

Popular examples of acquired distinctive marks

Burger King

The popular fast food brand known by the name “Burger King” is a perfect example of acquired distinctiveness. It was a descriptive mark that acquired secondary meaning over time. The name describes the main product that the brand is offering, which is a burger. However, it has changed its meaning through extensive use and gained popularity among customers of specific fast-food chains.

Pizza Hut

The popular pizza brand “Pizza Hut” in its name describes the product that they are selling in the name itself, which is pizza here. Over time, it has acquired secondary meaning through extensive marketing and customer attention-grabbing; now, customers relate it with the brand or with specific restaurants.

Holiday Inn

The brand “Holiday Inn” as its name suggests, could be a place for people to stay during holidays. However, later on, after extensive usage of the mark, the brand became associated with hotels, and it acquired secondary meaning as specific brands of hotels. Now it is popular among people at a high level.

Coca-cola

Coca-cola is also a classic example of a descriptive mark that has acquired secondary meaning over time through extensive use. The name itself describes the key components and nature of carbonated soft drinks. Now the brand Coca-Cola has a powerful impact on customers, and it becomes a symbol of happiness and nostalgia associated with drinking cold beverages in the minds of consumers.

Apple

When the famous company Apple Inc. was established in 1976, it was primarily producing and selling personal computers. The word ‘apple’ denotes fruit that is unrelated to computers or computer parts. After that, the company launched a series of products, such as the iPod, iPad, iPhone, and MacBook. Now it is an iconic example of selling leading technology innovative products with its sleek design and quality products.

Generic mark

Generic marks are not considered trademarks. These are the general common words or phrases used to represent a general category of a class of product or service. These words are general words for how we know that particular good or service. These words or phrases have nothing unique about them; anyone in the industry can use the term to describe the goods or services. Since they do not help in recognizing the source of goods or services, these marks are not eligible to get trademark protection from the trademark office. Generic marks are not eligible for trademark protection as they would lead to market monopolies and prevent fair competition between the competitors in the market.

Characteristics of generic mark

Common terminology

The main characteristic of the generic mark is that it has no uniqueness; rather, it is just the common terminology used that is universally used by consumers to describe the product or service. These are ordinary and everyday words used in everyday language during conversations among people.

Unable to distinguish brands

As these are the general terms that are used to define a particular product or service if a brand uses them, there will be no difference between the brands in how they distinguish themselves from each other. They do not identify the source of the product or service, and therefore there will be no distinction between the brands.

Non-eligible for trademark protection

Generic marks are not eligible for trademark protection from the trademark office under any circumstances. You will be eligible for protection if the mark has some uniqueness or inherent distinctiveness property in it, due to which the origin of the product or service will be determined, but since this is lacking in a generic mark, it is ineligible for protection.

Inherently weak

Generic marks are the weakest marks in terms of distinctiveness. Their marks lack quality that helps in identifying the source of the product or service; therefore, they are considered weak and ineligible for trademark protection. These terms will always be criticized by the trademark office as they do not uplift the brand’s value or provide any benefit in any way.

Famous examples of a generic mark

“Bag” for bags

The word bag represents the entire product, which is the “bag” here. This is a generic term. A brand can’t consider themselves to keep a mark as a “bag” to sell bags in their company, as this word shows the lowest level of distinctiveness. The word specifies the entire product without giving it any mind-stimulating thought or uniqueness; therefore, it cannot be considered eligible for trademark protection.

“Perfume” for perfume

The word “perfume” used as a brand name is also considered a generic mark. The word perfume denotes a general fragrance product or cosmetic product that is neither unique in itself nor unique enough to determine the origin of the product.

“Pizza” for pizza

The general term “pizza” refers to a type of food. The brand should not represent any particular type of food; rather, it should identify the source of that food in the name.

“Hotel” for hotels

The word “hotel” represents the generic meaning of the word, which is a type of lodging establishment. This mark will not be eligible for trademark protection. It could be eligible if the name indicates a specific hotel chain or brand.

“Lipstick” for lipstick

If your product is lipstick and you want to be involved in manufacturing, retailing, wholesaling, production, or any other activity related to this product, then your brand name can’t be that of the word “lipstick”. You can choose any other mark, such as a suggestive, arbitrary, fanciful, or acquired distinctive mark. This is to make your mark distinctive and to stand out in the marketplace.

Difference between suggestive and descriptive marks

A lot of times, people get confused between the two marks, i.e., suggestive and descriptive marks. There is a misconception that these marks are the same but slightly different. Let’s bust this myth. These two marks are entirely different from each other. Here are some differences between the two of these marks to clarify this doubt:

Basis	Suggestive mark	Descriptive mark
Meaning	A suggestive mark is a mark that provides a hint of the nature or quality of a product or service without describing it. It requires imagination to establish the link between the product and the mark.	A descriptive mark is a mark that describes a feature, characteristic, or purpose of the product or service they are representing directly. It leaves no room for interpretation.
Level of distinctiveness	Suggestive marks are inherently distinctive. These types of marks are eligible for trademark protection and require no secondary meaning to be eligible for protection from the trademark office.	Descriptive marks are non-inherently distinctive. These types of marks are not eligible to be protected under trademark law unless they provide evidence in support or acquire secondary meaning over time.
Examples	Some popular examples of suggestive marks are “Netflix”, “Jaguar”, “Coppertone”, and “Twitter”.	Some popular examples of descriptive marks are “Pizza Hut”, “Coca-Cola”, “American Airlines”, and “Burger King”.
Level of protection	Suggestive marks get a higher level of protection than Descriptive marks.	Descriptive marks are comparatively less protected than suggestive marks.
Difficulty in Registration	Suggestive marks are easy to get registered with the trademark office as they are distinctive.	Descriptive marks are difficult to register without evidence or acquired secondary meaning as they lack distinctiveness.
Creativity and imagination	This mark is creative and imaginative as it stipulates the mind of the customer to leave room for interpretation.	This mark leaves no room for consumers to interpret, be creative, or be imaginative, as it describes the product or service characteristics directly.
Impact on consumers	This mark has a positive impact on consumers. It leaves the consumer with curiosity and increases engagement with the brand.	This mark does not have a long-lasting impression on consumers. It is common and customers are less likely to engage with the brand.

Case laws for infringement of trademark distinctiveness

Coca-cola Co. v. Koke Co. of America (1920)

In the famous case of Coca-Cola v. Koke (1920), the company Coca-Cola sued another Koke Co. of America for infringement of its trademark. Coca-Cola has been using the name “Coke” for its soft drink, which is made up of two active ingredients cola leaves and Kola nuts, since 1886. However, the Koke Co. had been using “Koke” in its name since 1891. The US Supreme Court held that the company was not using the word wrongly to represent the customer’s Coca-Cola company, and hence they can continue using it.

Bayer Co. v. United Drug Co. (1921)

The case Bayer Co. v. United Drug Co. (1921) is a famous trademark infringement case revolving around the usage of the word “aspirin” in the pharmaceutical industry. Bayer Co. manufactured a pain relieving medicine called acetylsalicylic acid, which they were selling under the name “Aspirin”. Another pharmaceutical company with name United Drug starts making the same pain-relieving medicine. Later, they were selling it under the same name “aspirin” which was protected by Bayer co. When the case was moved to the Supreme Court the case was carefully explained. They found the word “aspirin” has become a generic term or it has remained distinctive maintaining the source of the manufacturer, which is Bayer Co. here. After careful consideration, the Court held that the word “aspirin” has lost its distinctiveness and now it is a generic term used by customers for pain relieving medicine regardless of its manufacturer. Since the trademark is no longer associated with Bayer Co., it can be used by anyone. Therefore, maintaining its distinctiveness is equally important to prevent it from becoming generic.

Walmart Stores, Inc. v. Samara Brothers Inc. (2000)

The landmark case of Walmart Stores v. Samara Brothers (2000) is a popularly known trademark infringement case in the United States related to the fashion industry. This case includes two cloth manufacturing companies. Samara Brothers figured out that Walmart stores are selling clothes that resemble the unique design of their shirts, including their color, design, and pattern. In 2000, Samara Brothers moved to the US Supreme Court to file a complaint for trademark infringement. The Court held that “trade dress” serves as a source identifier and acquires secondary meaning with it; therefore, the mark will be protected. The court also established the rule that trade dress infringement is evaluated based on confusion among customers regarding the same product. In this case, since there was confusion among the customers regarding the product, the court found Walmart’s store to be infringing the trade dress of the company.

Bliss Salon Day Spa v. Bliss World LLC (2001)

Bliss Salon Day Spa v. Bliss World LLC (2001) is another well-known case of trademark infringement for two companies that use the word “Bliss” in their names. Bliss Salon Day Spa has a local salon and spa business, whereas Bliss World LLC operates in beauty and skincare products that include a wide range of products and services. Both use the word “bliss” in their names, which creates confusion among consumers. The company Bliss World LLC has claimed that using the word bliss by local vendors in the same industry can create customer diversion and impact the reputation of the already established brand. The Court gave the decision in favor of Bliss World LLC, stopping Bliss Salon Day Spa from using the word “Bliss” in its name. The Court’s observation was that the usage of the same word in the same industry will cause consumers to think that there’s a relationship between the two brands, therefore, this should not happen under any circumstance.

Conclusion

If you also want to create an identity for your brand and establish it successfully in the market, then you need to create a distinctive mark. The USPTO rejects half of its applications due to reasons for non-distinctiveness. The rejection rate is nearly 48.3%, which has declined over the past 5 years. Therefore, it is essential for each trademark applicant to strictly follow the guidelines given by the patent and trademark offices to avoid rejection of their application. There are thousands of products and services on the market these days, and thousands of brands are trying to establish themselves in the market. With the correct strategies and guidance, you can still become one of those big, iconic companies that you dreamed of. Having distinctive marks not only sets your brand apart from your competitors in the market but also acts as a pathway to building customer loyalty, trust, recognition, and other things. The world could be chaotic if there were no protection for the intellectual property rights of businesses and brands. Since it is now available, you can benefit from it.

In the US, a trademark is protected by both common law and federal law. Common law protection arises when there is use in commerce. On the other hand, federal trademark law provides additional benefits, such as protection at the time of filing a case in federal court or nationwide protection. Today’s world is interconnected. We see brands crossing borders, expanding their network and reach. Therefore, distinctiveness is a must through which they can get legally protected. It is not merely about legal protection but also about creating goodwill that leaves an impression on people. This is a powerful tool for every business that acts as a bridge to connect businesses and customers across various cultures and languages. Understand the requirements carefully, give your brand a distinctive mark, and create a legacy for other generations to come.

Frequently asked questions on conditions of protection of trademark in the US (FAQs)

What is trademark distinctiveness?

Trademark distinctiveness is a feature through which a customer recognizes and is capable of identifying the source of goods and services from which they are coming. A distinctive trademark makes it easier for customers to recognize and remember the brand. It is a unique character that sets a brand apart from its competitors in the market. A mark with higher distinctiveness will get the approval of the USPTO quickly and easily.

Is a distinctive trademark required for brand building?

Yes, a distinctive trademark is essential for building a brand in the marketplace. As a distinctive trademark helps a brand establish a unique brand identity in the market, it builds customer trust, and attracts loyal customers to the brand. If the customer is satisfied with the products and services a particular brand is offering, they will recognize the brand, and they will likely use the same brand again and again.

What are some examples of trademark distinctiveness?

Some of the most common examples of trademark distinctiveness are “Apple,”, an arbitrary mark, for computers and electronics items, the mark has no direct connection with the word, making the mark inherently distinctive. Another is “Google”, which is a fanciful mark as it was invented with a word having no precious meaning attached to it. “Jaguar”, associated with luxury automobiles, is a suggestive mark.

What are the different types of trademark distinctiveness?

Trademark distinctiveness is categorized into different levels based on its capacity to identify goods and services. The five levels are:- arbitrary mark (existing words with no relation to goods and services), fanciful mark (self-invented words), suggestive mark (mark that suggests rather than describes a product or service), descriptive mark (attain secondary meaning with extensive use), and generic mark (common name of products and services). Each mark has a unique meaning attached to it and has a different level of distinctiveness. Read the above in detail.

Can a distinctive trademark help with international brand expansion?

Yes, a distinctive trademark helps with international brand expansion. As it helps one easily recognize the brand, it will be easier for customers to recognize the brand in foreign markets as well. This brand can also help gain the trust of international customers. A distinctive mark will boost the confidence of international consumers. A consumer is more likely to use a brand that is already established and recognized globally than one that is only available in their hometown.

How do I determine if my trademark is distinctive?

To ensure that your trademark is distinctive, you need to check its inherent distinctiveness. The more inherent your mark is, the better it is for your brand’s recognition. Inherent distinctiveness is fanciful, arbitrary, or coined marks such as “Apple”, “Google”, “Jaguar” etc. If your mark is descriptive, it might lack distinctiveness at the beginning. Conducting a prior trademark search is equally important to ensure that no rights have been infringed.

Can general terms be registered as trademarks?

No, general terms are ineligible for registration as trademarks as they lack distinctiveness. General terms are general-meaning words and phrases used to describe goods and services by common people. As this does not help in identifying specific goods and services of a brand, it does not fall under the category of distinctiveness. For example, a perfume word cannot be a mark as it describes the product.

Can I change my trademark if it lacks distinctiveness?

Yes, if your trademark lacks distinctiveness, you have the option to change it and make it more distinctive. You need to do extensive research before choosing a mark. Once you are done choosing a distinctive mark, you can apply to the USPTO. Keep track of the status of your application to check if it is up to par. Use rebranding to introduce your distinctive mark to customers. Make necessary changes to labels, products, packaging, advertisements, and promotions.

References

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