Identifying a Registrable Trademark - Trademark 101

What are the basic requirements for trademark:

The requirements for a registrable mark are for it to be:

  • Distinctive of source:

    • There is a clear distinction between a product made by Apple vs Microsoft. Both companies make a diligent effort to place distinctive source indicators, such as logos or overall design of a product to help consumers differentiate between the two.
  • Used in commerce

    • Anything that can be lawfully regulated by the government. To be considered “in use” the mark must have been used in relation to a sale made across commerce channels.
  • Not functional

    • While Coca-Cola has trademark protection for its bottle, it is only for the design elements of the bottle and not the idea of the bottle itself because that would then limit every industry from ever being able to use a bottle.

Strength of a mark:

For a mark to be considered “strong” it needs to be highly distinctive, which immediately identifies the owner as the source of the covered goods/services. On the other hand, a mark is considered “weak” if it is merely descriptive or is too generic to be considered a source identifier for a singular entity. A mark can fall into one of the following categories:

  • Generic : Marks that are considered common and part of everyday life will not be protectable. For example: “Lip Balm” or “Frosty treats.”
  • Descriptive: Marks that merely describe the goods and/or services usually cannot be protected unless the mark has acquired distinctiveness through use in commerce for a significant period of time. For example: “Honey roasted peanuts” or “bread.”
  • Suggestive: Marks that suggest, not describe, and allow the customer to guess the connection to the goods and/or services. For example: “Airbus,” “Greyhound,” “Netflix,” “Microsoft,” or “Android.”
  • Arbitrary: Marks that have an ordinary dictionary definition, but have no relationship to the goods and/or services, other than the source identifying function it serves. For Example: “Apple,” or “ Windows.”
  • Fanciful/Coined: Marks that are invented with no ordinary or dictionary definition are the strongest because they are the most distinctive. For example: “Xerox,” “Kodak,” “Google,” or “Rolex.”

What makes a good trademark?

A good mark is not generic or descriptive. There needs to be a healthy balance of creativity and a distinctive look that will allow consumers to identify the source of your services and/or goods. It is a balance that is often the difference between a registrable mark and a rejection.