The legal protection extended to a trademark depends on the mark’s distinctiveness (strength). If a consumer can identify the source of a product or service, then the mark is distinctive. Some are inherently distinctive, and others have acquired distinctiveness.
Under US trademark law, the types of trademarks can be outlined in five categories, a sliding scale known as the “Spectrum of distinctiveness.” The more distinctive a mark, the stronger the protection it receives. Therefore, when developing a specific brand strategy, consulting with an Intellectual Property attorney is essential to understand a mark’s protectability from a legal perspective.
The image below represents the spectrum of distinctiveness and lays out where an applied-for mark might fall when evaluated by the United States Patent and Trademark Office (USPTO).
Descriptive Trademark Definition
A descriptive mark merely describes a product or service instead of the source. Additionally, a mark describing the characteristic of the product or service is also considered merely descriptive. For a descriptive mark to be registered on the principal register, it needs to have acquired distinctiveness.
Suggestive Trademark Definition
Suggestive trademarks elicit the quality of a product or service the trademark applicant provides. A suggestive mark will not describe the quality but let the consumer make a mental leap when determining the nature of the trademark owner’s product or service. Suggestive marks lie somewhere in the middle of the spectrum of distinctiveness.
Although they won’t be afforded the highest level of trademark protection, they will receive more protection than a generic or descriptive mark. The difference between descriptive and suggestive trademarks is the mental leap required by a suggestive mark for a consumer to determine the actual product or service sold under the applied-for trademark.
Are Suggestive Marks Inherently Distinctive?
Yes, suggestive trademarks are considered inherently distinctive. Marks that are not inherently distinctive have to provide proof of acquired distinctiveness. In addition to suggestive marks, other marks that are considered inherently distinctive include:
Arbitrary marks use actual words or symbols but utilize them in a way that is entirely different conceptually from the ordinary meaning. These marks are considered inherently distinctive and almost always protectable.
For example, Apple computers have nothing to do with the ordinary meaning of “Apple.” Here, there is a conceptual difference in how Apple uses its name in the tech industry from how it is commonly used in society.
Fanciful marks are usually composed of original terms, symbols, or imagery. These marks, like suggestive and arbitrary marks, are inherently distinctive. Fanciful and arbitrary marks are generally afforded the broadest level of trademark protection under US trademark law. Alongside arbitrary marks, fanciful marks are considered the most vital marks along the spectrum of distinctiveness.
For example, Polaroid is an entirely made-up word that is inherently distinctive and, therefore, a fanciful trademark.
Are Descriptive Marks Inherently Distinctive?
No, descriptive marks are not considered inherently distinctive. Descriptive and suggestive marks fall on different sides of the spectrum of distinctiveness. Although prolonged use of the mark in the marketplace, with the ability to show that the mark has acquired secondary meaning, can result in acquired distinctiveness by the descriptive mark.
In addition to descriptive marks, other marks that are not considered inherently include:
A generic mark is not protectable as a trademark because it merely identifies the common terminology used for the product or service. For example, no single individual can claim trademark rights in “Bagels” for or bagel shop.
Examples of Suggestive Marks
Nike was a goddess in greek mythology that personified victory. A goddess that athletes worshipped for a long and prosperous career. Do you see how “Nike” can be a suggestive mark that evokes a quality of success related to athletic products?
Tesla was inspired by Nikola Tesla, an inventor and electronic engineer responsible for the alternating current power system now used in homes and buildings. Fun Fact, Nikola Tesla was a staunch protector of his intellectual property and was granted over 100 patents for his inventions.
The term “Microsoft” suggests to consumers that the underlying goods and services under this mark will be small or for small computers.
KitchenAid is a suggestive mark because it evokes a characteristic of the product being of assistance in the kitchen.
Examples of Descriptive Marks (With Acquired Distinctiveness)
American Airlines merely describes the product and service being offered under the mark. A consumer can quickly determine the source of the mark, but it also has years of market presence to receive acquired distinctiveness.
Bank of America is descriptive of the products and services it provides. The mark’s mere descriptiveness extends to being geographically descriptive as it indicates the origin of the products and services offered under the mark.
United Postal Service (UPS) is merely descriptive of its products and services in two ways: The word mark is merely descriptive of the services provided under the mark. Additionally, the mark is geographically descriptive as it describes the location from where the products and services originate.
Should I Hire a Trademark Attorney?
To avoid infringing on another’s intellectual property, it is also essential to conduct a search and clearance for the applicant’s trademarks, as it is primarily intended to be used. Past studies, and even the USPTO, state that hiring a trademark attorney to represent you increase the chances of registration. If you need further assistance acquiring a trademark registration, please book a free 15-minute consultation by clicking here.
Sahil Malhotra is an Intellectual Property Attorney, who founded Drishti (“vision”) law because of his vision in protecting dreams and ideas.
He provided individuals and small businesses with an opportunity to enhance their IP’s value by helping them register trademarks and successfully argue against office actions. In addition to his training and experience, he has been deeply involved in the multifaceted IP portfolio at UIC and continues to be associated with IP organizations and conferences.
To know more about Sahil Malhotra — Click Here