Why is Being ‘Inherently Distinctive’ Important to a Trademark or Service Mark?
A Strong Trademark is a Bigger Piece of Intellectual Property.
An inherently distinctive trademark is a strong trademark. An inherently distinctive trademark may be registered on the USPTO Trademark Principal Register, qualifies for more protection under more federal, state and common law and is stronger for use in business to promote authenticity and for expanding product lines. The distinctiveness of a trademark may also help protect the mark from problems with conflicting marks and counterfeiting.
The stronger the trademark the greater protection received from the courts. Nike,
Inc. v. Just Did It Enterprises, 6 F.3d at 1231 (C.A.7 (Ill.), 1993) quoting Squirtco
v. Seven-
The opposite of an inherently distinctive mark is a descriptive mark or a mark that does not function as a mark such as an ornamental mark. Descriptive marks are much harder to protect, they must first acquire secondary meaning or acquired distinctiveness:
"Descriptive" marks "merely describe a function, use, characteristic, size, or intended
purpose of the product," such as YELLOW PAGES telephone directories and 5 MINUTE
glue. And this class of marks includes those that are geographically descriptive,
such as BOSTON beer produced by a Boston-
"Another test of descriptive-
Descriptiveness is construed broadly. [See Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 217 USPQ 988 (5th Cir.1983)]. Indicia include: (1) the mark's dictionary definition corresponds with its meaning and context; (2) upon hearing the mark, one need not use "imagination, thought and perception to reach a conclusion as to the nature of goods;" (3) "competitors would be likely to need the terms used in the trademark in describing their products;" and (4) others have used the term in marketing a similar service or product. Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 227 (5th Cir.2009).
Trademark refusal office actions are a big problem with merely descriptive trademarks that are not inherently distinctive. Overcoming the merely descriptive or descriptiveness refusals may require both effective arguments and evidence, sometimes a lot of evidence. Sometimes a trademark applicant’s mark is so highly descriptive that the prima facie case of distinctiveness which must be established by applicant requires better evidence or more evidence because the purchasing public will be less apt to view the term as a trademark. The “greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning.” See In re Bongrain International Corp., 894 F.2d 1316, 1317 n. 4, 13 USPQ2d 1727, 1728 n. 4 (Fed. Cir. 1990).
In the illustration below, acquired distinctiveness (red arrow) can potentially move a trademark’s distinctiveness to the left but note that no amount of acquired distinctiveness can turn a generic mark into a distinctive mark.
PLAN FOR A SUCCESSFUL, STRONG TRADEMARK
To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these five steps:
1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions),
2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)
3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)
4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimen refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)
5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs which can slow down a registration. Incorrect IDs may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)
*We don’t stop here but this is a good start!
Call us at 1-
We can help you create and protect an inherently distinctive trademark.
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Valid and Invalid Uses of Words, Number, Symbols, Slogans, Taglines, etc. as Trademarks This is not an exhaustive list or a conclusive list, each potential trademark is considered individually by the USPTO and the courts with respect to the goods, services & facts involved. |
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VALID MARK- |
NOT VALID MARK- |
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A trademark should be distinguishable from the rest of the text by use of a different font, different size font, different color or some other designation to consistently indicate these words or this symbol is being claimed. |
When the alleged trademark is not set apart in any way to show prominence with respect to other words, for instance a mission statement, like a slogan, can serve as a trademark, but if the words are mixed in with other words and not set off to describe the source of the product or service, it is just a slogan not a trademark. |
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A trademark should be used as an adjective (not a noun or verb) to indicate that the product or service comes from a particular source. |
When trade names are used solely as nouns, such as if the specimen uses the trade name with an address and does not show what goods or services are connected with the trade name. |
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The generic name of the class of goods or services follows the trademark, such as
Bond- |
When a claimed trademark is merely used to describe the qualities of a product and not used in a trademark sense to describe the source of the product. Example: The mark SOFT.COM for facial tissues is merely descriptive of the tissue. |
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The appropriate symbols should be placed next to the mark to designate that this is a claimed trademark. TM or SM can designate unregistered trademarks or service marks and ® is used for USPTO registered trademarks or service marks. Example: or AA DealFinderSM for an unregistered trademark.. Other countries use the ® as well, please consult local practices. |
When a domain name that is merely used as a domain name (noun that acts as address on internet) and not used to describe the source of the product or services. |
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Good practice: The first time the mark is used in text, a footnote can indicate the status and source of the mark. |
Background designs such as common geometrical shapes and borders |
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Titles of single works |
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Informational matter that is descriptive |
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Model or series numbers and grade designations |
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Names of artists and authors |
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Telephone numbers such as 1- |
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