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

How the USPTO Evaluates Distinctiveness

When a trademark examiner at the USPTO receives your application, evaluating distinctiveness is one of the first analytical steps. Examiners apply the Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976) spectrum as a guiding framework, though the Federal Circuit and the Trademark Trial and Appeal Board have refined its application over decades of case law. The practical effect is that fanciful and arbitrary marks sail through examination on the distinctiveness question, suggestive marks typically survive with some scrutiny, and descriptive marks face refusal unless the applicant can demonstrate acquired distinctiveness, also called secondary meaning.

Acquired Distinctiveness and Secondary Meaning

A descriptive mark can overcome a Section 2(e)(1) refusal if the applicant demonstrates that through long and exclusive use in commerce, consumers have come to associate the mark with a single commercial source. This is called secondary meaning or acquired distinctiveness. Evidence used to prove secondary meaning includes:

• Duration and exclusivity of use — courts and examiners are more persuaded by five or more years of exclusive use
• Advertising expenditures — documented spending on promoting the mark to relevant consumers
• Consumer surveys demonstrating that a substantial portion of consumers associate the mark with a single source
• Sales figures showing a strong market presence
• Unsolicited media coverage referencing the mark as a brand identifier

Proving secondary meaning is costly and uncertain. This is one reason why choosing an inherently distinctive mark from the outset is the preferred approach. Investing legal and marketing resources in a descriptive mark that may never achieve secondary meaning is a significant business risk.

The Difference Between Suggestive and Descriptive: Why It Matters

The line between suggestive and descriptive marks is the most frequently litigated distinctiveness question. A suggestive mark requires consumer imagination, thought, or perception to connect the mark to the goods or services, while a descriptive mark immediately conveys a quality, characteristic, function, or feature of the goods or services without that imaginative step. Compare COPPERTONE for sunscreen (suggestive — you must imagine a sun-protection connection) with AFTER TAN for post-tanning lotion (descriptive — it directly describes when the product is used).

USPTO examining attorneys apply what is called the “imagination test” or “the competitors’ need test” to draw this line. If competitors selling the same goods or services would naturally need to use the same word or phrase to describe their products, the mark is likely descriptive rather than suggestive. Understanding this distinction matters when you are selecting and developing a trademark, because choosing a mark that sits clearly in suggestive territory protects you from expensive distinctiveness battles both at the USPTO and in subsequent enforcement litigation.

Challenges With Design and Logo Trademarks

Distinctiveness analysis applies to design marks and logos as well as word marks. A logo that is merely an ornamental or functional shape may be refused as lacking distinctiveness. Geometric shapes, common symbols, and basic typefaces generally do not qualify as inherently distinctive. To be registrable, a design mark must be sufficiently unique in its combination of elements that consumers would perceive it as a source identifier rather than mere decoration. Three-dimensional product configurations face an even higher bar — the Supreme Court held in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000) that product designs are never inherently distinctive and can only be protected upon proof of secondary meaning.

Next Steps After Identifying a Distinctive Mark

Once you have identified a mark that clears the distinctiveness threshold, additional legal steps are necessary before you begin using it in commerce:

• Comprehensive trademark clearance search — Search the USPTO’s TESS database, state trademark registries, common law use, domain names, and social media handles to identify any conflicting marks
• Likelihood of confusion analysis — A trademark attorney must evaluate whether your proposed mark is confusingly similar to any existing mark under the multi-factor DuPont test used by the USPTO and federal courts
• Intent-to-use application or use-based application — File your trademark application with the USPTO before competitors adopt the same or similar mark; an intent-to-use application reserves your priority date even before commercial use begins
• Proper trademark usage — Use the TM symbol immediately upon first use and switch to the ® symbol once registration issues; consistent, proper usage reinforces trademark rights and deters infringers

Selecting a strong, inherently distinctive trademark is one of the most important branding decisions your business will make. The investment in getting it right from the start pays dividends for years. Contact the trademark lawyers at Revision Legal at 231-714-0100 for help evaluating the strength of your proposed mark and navigating the registration process.