What is Trademark Distinctiveness?

Trademark distinctiveness refers to the features of a registered design that identify products or services as originating from a specific company.

When is a Trademark Distinctive?

Distinctive trademarks are:

  • Different from other marks used to describe similar goods and services.
  • Ones which include a visual description of the type of goods or service.
  • Recognized as identifying the source of the goods or service.

Spectrum of Distinctiveness

Why is Trademark Distinctiveness Important?

The more distinctive a trademark design is, the easier it is to register that trademark. The higher up in the distinctiveness spectrum a trademark is, the more protection that it receives under U.S. law. Having a trademark high in the spectrum can help a company avoid the effort and cost involved in fighting patent infringement issues.

Even when the trademark is a common word, it can still be distinctive for a particular good or service. Even though "Apple" is a common English word, it was successfully trademarked for computers and related products. It was also trademarked (by another company) for a record label. The computer company and the record label later made an agreement that the computer company would not market music software under the name "Apple" or when using the "Apple" logo. Interestingly, MacOS comes with a System Sound named "sosume." Recently, the Apple computer company started an electronic music store, which prompted a trademark lawsuit from the Apple Music company.

Reasons to Not Use Trademark Distinctiveness

There aren't valid reasons for not using trademark distinctiveness. Generic marks, which are at the lowest level of the distinctiveness spectrum, use common names for products or services. A generic mark cannot receive protection as a trademark.

Frequently Asked Questions

  • What product or service qualities should the trademark contain?

A registered trademark should imply the components, qualities, characteristics, functions, features, purpose, or use of the goods or services.

  • Should a company always choose an arbitrary or fanciful trademark?

Arbitrary and fanciful trademarks are at the two highest levels in the spectrum of distinctiveness and thus receive more protection under the law. However, in some cases, a company can try to register a less-distinctive mark under the claim of "acquired distinctiveness." The company must prove that the trademark has been used long enough that consumers use it to identify the company as the source of a product.

Steps to File

The guidance of a good trademark attorney can be an invaluable asset to your new business, just as your trademark may someday be the most valuable asset your business owns. Look for an attorney who can effectively and economically help you choose excellent names from both a marketing and legal standpoint. Before filing the application to register your trademark, consult a business attorney via UpCounsel. Speak with an expert who can answer your questions and help you with the process of obtaining a trademark for your design.