The strength of a trademark is directly related to the nature of its distinctive character. Whether a mark is distinctive is measured by the uniqueness of relationship between the mark and underlying goods or services. Trademark distinctiveness is a key element in determining the strength of mark and accompanying scope of legal protection available accorded to it. Moreover, it is prerequisite to registrability.
Trademark strength determines the extent to which you can prevent others – usually competitors – from adopting the identical or nearly identical mark for the same or similar goods or services. Ergo, strong marks enjoy the widest scope of protection while weak marks enjoy the narrowest scope of protection.
When selecting a name for use as a brand name or trademark, the distinctive character of the mark should be a key consideration.
Marks that are inherently distinctive bear no relationship to the underlying products or services other than representing their source. As applied to those goods or services, they simply have no meaning other than that of an indicator of source. Inherently distinctive marks enjoy the broadest scope of legal protection.
Marks that describe a quality or feature of the underlying goods or services may acquire trademark distinctiveness over time through consistent and continuous use in the marketplace. Once a mark has acquired distinctiveness, it has what is called “secondary meaning,” or a second meaning as a source indicator. The first meaning, of course, is the quality or feature it describes. These marks are accorded a much narrower scope of legal protection.
The Spectrum of Distinctiveness
Fortunately, we have a wonderful guide to help us gauge the distinctive character of a mark at the very beginning of the brand selection process: the “spectrum of distinctiveness.” Coined or fanciful terms are situated at one end of the spectrum and make for the strongest marks, while descriptive terms sit at the other end and comprise the weakest class of marks. Generic terms cannot function as trademarks and are never protectable.
Coined and Fanciful Marks
Coined or fanciful marks consist of made-up words or terms and represent the strong end of the spectrum. They have no meaning other than that of a source identifier for a particular product or service. KODAK, TYLENOL, and KASHI are excellent examples of fanciful marks. They have no meaning outside of their role as trademarks and enjoy the widest scope of legal protection.
Arbitrary marks contain real words used in an arbitrary manner. As applied to the relevant products or services, they have no logical meaning. Consider these examples: APPLE for computers, YAHOO! for an Internet search engine, or CAMEL for cigarettes. Arbitrary marks are also inherently distinctive and are considered strong and highly protectable marks, just a notch below coined terms. They too enjoy a broad scope of legal protection.
Suggestive marks are the last category of inherently distinctive marks. They consist of words or phrases that cleverly “suggest” the nature of the marked goods or services, but do not actually describe a quality or feature of them. They require some thought and imagination to fully discern the relationship between the mark and product or service. THE NORTH FACE for sportswear, CHICKEN OF THE SEA for tuna, and THE HOME DEPOT for a retailer of home improvement products are well-known examples of suggestive marks.
On the lower end of the spectrum are descriptive marks. Descriptive marks convey something about a quality, feature, characteristic, purpose, or even ingredient of the underlying goods or services. They are not inherently distinctive and cannot function as trademarks unless and until they acquire a secondary meaning in the marketplace. Well-known descriptive marks that have acquired distinctiveness and now function as source identifiers include BANK OF AMERICA for a U.S. bank and BEST BUY for a consumer electronics store. Descriptive terms that also function as trademarks are legally protectable, but to a more limited extent than their counter parts on the other end of the spectrum.
Generic terms sit opposite coined terms on the spectrum. They can never function as trademarks or receive any form of legal protection.
Choose a distinctive name that fits nicely on the strong end of the spectrum to adopt for trademark use. Considering the inherent strength of the mark from the inception of your brand development will greatly ease the brand’s entry to market and facilitate its ability to grow and scale.