Trademark distinctiveness

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WARNING: Distinctiveness is the hardest concept to understand in all of trademark law. It is counter-intuitive and complex. Unfortunately, understanding it is the key to coming up with a good trademark. We’ve tried to make it as painless as possible, but it’s still terrible.

In order to receive any sort of protection, trademarks must be “distinctive”. “Distinctiveness” is a stupid legal term. So, the first step to understanding the concept is to rename it. Let’s call it “non-descriptiveness” from now on (just remember to use the term “distinctiveness” at cocktail parties so you don’t look like a heel).

The more descriptive your trademark is of your goods and services, the less valuable it is.

The distinctiveness question essentially rests on how descriptive the trademark is of the goods or services. The more descriptive the trademark is, the weaker and less valuable it is. This is counter-intuitive for many marketing decision-makers aiming to communicate the purpose of the goods or services to the target audience.

Distinctiveness is best described on a spectrum as follows:

  • “Generic” marks are merely the common name for the goods or services and cannot receive trademark protection.
  • “Descriptive” marks describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. These marks are difficult to register.
  • “Suggestive” marks require imagination, thought or perception to reach a conclusion as to the nature of those goods or services. These marks can be registered, but are considered weaker and less valuable.
  • “Arbitrary” are real words that do not suggest or describe a significant ingredient, quality or characteristic of the specific goods or services.
  • “Fanciful” marks are marks that have been invented for the sole purpose of functioning as a trademark. Arbitrary and fanciful marks are the strongest and most valuable trademarks.

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