toggle accessibility mode
brand stickers on laptop

Is My Proposed Trademark Inherently Distinctive?

By John DiGiacomo

Inherently distinctive trademarks are the best type of trademark and they are the easiest trademarks to successfully register with the US Patent & Trademark Office (“USPTO”). In general, trademarks are words, phrases, designs, logos or other things that are used on products (or with services) to uniquely identify a commercial source for the products (or services). To function as a trademark, the trademark must create — in the minds of consumers — an association between the trademark and the product/service. In general, something that is distinctive is something that is memorable to the consumer. There is a spectrum of distinctiveness commonly described as the following:

  • Generic, general or common word/mark trademarks — examples might be a triangle as a mark or a common word like “BLUE” — these either do not function as trademarks or are not distinctive
  • Descriptive trademarks — an example might be a word mark like “COMPUTER REPAIR SERVICES” — these trademarks merely describe the product/service and are not distinctive
  • Suggestive — an example is “AIRBUS” for an airline — it is suggestive of the service, but does not precisely describe the service — these types of trademarks are usually distinctive, but not the most distinctive
  • Fanciful or arbitrary — examples include “GOOGLE” and “EXXON” — these are inherently distinctive, the most distinctive type of trademark

When evaluating whether your proposed trademark is distinctive, the foregoing categories can be used in the analysis.

Note that there are many techniques for converting a common work trademark or symbol into something distinctive. For example, one technique is to use purposeful misspellings. So, instead of “FISH & TACKLE” for fishing, hunting and sporting goods products, you can use “PHISH & TAKL.” This will be a distinctive trademark particularly if coupled with a unique, stylized font. With purposeful use of misspellings, due regard should be given for how consumers use the internet to find and purchase products. PHISH & TAKL may be a distinctive trademark, but consumers will have to remember the misspellings when they type out their search. Of course, extensive and repeated use of the common words on your website can help resolve that problem. A similar technique can be used with numbers. Thus, “GR8 FENCING” instead of “GREAT FENCING” for a fence product and installation company.

Once you have created a distinctive trademark, there are a number of other legal concerns before you can begin using your new trademark. The most important is that your proposed trademark is not already in use by another business. Likewise, your proposed trademark cannot be confusingly similar to an existing trademark being used. In general, this will require an exhaustive trademark search which involves searching the market and the USPTO’s website for existing uses of your mark, logo, design or words/phrase. Whether a proposed trademark is confusingly similar requires some deep legal experience with trademarks and trademark infringement law. Thus, it is best to have an experienced trademark lawyer assist with the trademark search. For more information or if you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal at 231-714-0100

Put Revision Legal on your side