Whether you’re considering applying for your first trademark or are a seasoned pro, you know that the first step to getting your trademark is distinctiveness.
What makes your name, your logo, your products stand out? What is going to attract business? Today, we’re going to take a deeper look into the levels of distinctiveness and how that knowledge can help you successfully get your trademark.
Distinctiveness asks the question: how unique is your mark? And what is your mark? Your mark is your logo, your words, your phrase, your graphics—whatever it is you're using as your indication of branding.
Distinctiveness is how unique your mark is relative to the types of products and services that you're selling. So, you might be selling cups and mugs, bookcases or books, or you might be like me and selling a service, like legal services or business consulting. Whatever it is, those goods or products and services are what you're going to brand with your mark.
You need to look out for how distinctive your brand is relative to the types of products and services that you're going to use that with. You cannot get a trademark if you are not distinctive enough.
There are categories to help you figure out if your mark is distinct enough to trademark. Understanding and utilizing those categories can make or break a trademark application.
First is the most distinctive: fanciful, arbitrary, or coined phrase marks. This can mean any word, color, or image that has no association with the types of products and services that you are trying to sell and brand with that mark other than for branding purposes.
A fanciful phrase is something that you just make up. Xerox is a made-up word. They can't inherently have any association with the types of products and services that they are selling because it's a made-up phrase. It doesn't exist outside of the fact that that you created, or coined, that phrase.
Arbitrary means is something that is not necessarily made up, but it has an arbitrary relationship or no relationship to the type of the type of products and services you offer. A very famous example of this is Apple’s apple. Apples have absolutely nothing to do with computers, except for their use in their brand.
Fanciful, arbitrary, or coined phrase trademarks are the best marks in terms of getting a trademark registered. However, these are typically the very hardest marks to use from a marketing standpoint because they have no relation to your product. They don't tell your customers anything about the type of goods and services that you sell to them.
The second level of distinctiveness are suggestive marks. Suggestiveness means that the phrase or colors or words or pictures that you are using don't necessarily describe the product or service that you're selling, but they do give a suggestion or towards the type of thing you're selling.
The example I like to use to explain this my own law firm: Intellectual Strategies. There are a lot of people who talk about being a strategic attorney or a strategic law firm. There are also a lot of law firms and consulting companies who talk about intellectual property.
Intellectual property is a major focus of what we do: we help people strategize to make sure their IP matches and aligns with their business strategy. However, the phrase intellectual strategies by itself doesn't mean anything.
It's not a phrase that's common in the industry. Nobody else is using it. And yet, it's made up of words that are very familiar to this industry. It is suggestive of what our firm does. Some people get confused because it's a phrase that could mean a couple different things, but they know I am in the strategic world and I'd have to do something with intellectual—probably property or intellectual or intangible assets.
It's not descriptive and it's not completely made up. It's suggestive of the things that I do. My professional opinion is that there's some advantage to being suggestive over coined or arbitrary phrases because you have a lower marketing threshold, but you can compensate.
Distinctiveness falls into four main categories. Two of those categories are above the threshold for what is what you can register as a trademark and two of those actually fall below the threshold.
Arbitrary, fanciful, and coined phrase marks and suggestive marks are above the threshold to be registered on the principle register, and that's where you want to be. You want to be on the principle register, you want to get above that. You want to be above that threshold in order to get your mark registered.
The final two levels of distinctiveness fall below the threshold of registerability. They are called merely descriptive and generic
Merely descriptive means you are only describing the thing that you're selling or doing. If you’ve ever seen a product claiming to be the World’s Best or famous, then you’re familiar with merely descriptive language.
Slapping a superlative on a product does not make it trademarkable. If it did, every pizza place in New York City would have some serious trademark violation issues.
What if I called my law firm “Intellectual Property Lawyers” or even “Best Intellectual Property Lawyers?” Those types of phrases don't take it out of the merely descriptive level. It's just describing what I do.
I'm not selling lawyers, so it's descriptive of what everybody would think of the types of words and phrases that people would think of for legal services so that's merely descriptive.
The last one is generic. If everybody uses that word to describe the product or the service that you sell, then it is a generic word. You can't get any exclusive rights to use that or to stop other people from using it.
Imagine if I wanted my trademark to be “Patents” because I help people get patents. Well, “patents” is a completely generic word. I can't get it trademarked, even if I wanted to.
Understanding and navigating these levels is tricky for a lot of people because it takes both legal and business input to select the right mark for your product or service. Then, once you have settled on that mark, a lot of times you'll see that what is probably a suggestive mark gets tagged by an examining attorney as being merely descriptive.
If you're not familiar how to traverse those, meaning how to argue against those rejections from the examining attorney, then you're likely to give up. I can't tell you how many marks I've seen where I went online and I'm doing research for somebody on something that I’ve thought “they have what looks like it could have been a really good mark, but it got a rejection and they just couldn't overcome it.”
A lot of times, there's way more wiggle room and ability to take a mark that an examining attorney has designated as merely descriptive and make some very valid and convincing arguments that are not merely descriptive. It might be descriptive to a degree, but it's not merely descriptive, and so it's actually a suggestive mark.
Here are couple of things you might try in order to help you get above that merely descriptive and generic threshold:
And here is a bonus trick if you want to use a coined phrase: pair up your mark. Let’s say you’ve made up a name and you really like it, but you just need to tie it into the types of products or services that you're selling. I would suggest pairing up your mark.
If you can take an otherwise fanciful, arbitrary, or coined mark and match it up with a very descriptive phrase, then you can get a trademark on the mark itself and then you can use that phrase in your marketing materials to tell your customers exactly what it is that you're selling.
Getting the RIGHT trademark filing for your brand and business can be a delicate balance between what you want, what represents your company, product, and service, and what will help you stand out from your competition.
It’s not always as easy as “Here’s my mark, let’s submit the application.”
If you need help strategizing on your mark and ideas, we work with lots of ecommerce store owners to help them protect their brand. Schedule a time on our calendar and let’s chat!
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