In the U.S., there are two primary types of trademarks: design marks and word marks. Design marks are also known as logos, and they include both the graphic elements (like the Apple apple) and stylized text (like the iconic cursive of the Coca-Cola logo). Word marks cover words only, without any design elements (so the wording "Coca-Cola," rather than the logo font). These elements make up your brand. When you're starting your business, or if you're just now considering trademarks for an established business, you want to make the strongest possible brand. In this guide, we’ll cover the spectrum of distinctiveness, a concept that will help you gauge how strong your brand is based on its relative uniqueness.
Unique Is Strong: Why Distinctiveness Matters for Trademarks
A strong brand should accomplish two things. First, it should set your products or services apart, so consumers see that brand and know it refers to your company and not any other. Second, the brand should be easy for consumers to remember. The key to doing both? What trademark lawyers call “distinctiveness.”
Distinctiveness captures how unique a trademark is, when compared to what you are selling. The more your brand name literally describes your product, the less distinctive it’s likely to be. For example, if you are selling salmon steaks under the trademark DELICIOUS SEAFOOD, that brand is a very close match to the product. Here, your competitors would also be likely to use the terms “seafood” and/or “delicious” in their brand or marketing materials, so the name DELICIOUS SEAFOOD doesn’t set you apart and consumers aren’t likely to remember it. This would be a so-called “weak” brand, hard to enforce as belonging to one business and therefore hard to register as a trademark.
Having a distinctive trademark makes your brand much easier to register at the U.S. Patent and Trademark Office, because the trademark examiner will be looking at whether prior-filed trademarks are likely to be confused with yours. If another business like yours has already registered trademarks that are similar to what you're trying to protect, you might have to undergo a rebranding process in order to register a trademark for your product or service. It's best to think about this before you start selling products. The more unique your brand is, the better you'll be able to protect yourself from competitor fraud or copying.
The Spectrum of Distinctiveness
So how do you know if your mark is distinctive? And how do you improve it if it isn't currently distinctive? You just need to understand what’s called the “spectrum of distinctiveness,” created by the courts in 1976. This is a continuum with five categories, each progressively more “distinctive.”
Generic marks are the words used to define the thing you are selling. These marks are extremely literal, like FLOWERS for floral arrangements or BREAD for baguettes.
Descriptive marks don’t name the goods or services themselves, like generic marks do. Instead, they describe something about those goods and services. These can become distinctive over long periods of exclusive use but they are not “inherently” distinctive. Like AMERICAN AIRLINES, descriptive marks are still fairly literal and not particularly unique. Other examples might include PLUMBING MASTER for plumbing services or BEST.LEGGINGS.EVER for pants.
Suggestive marks allude to, or “suggest,” a characteristic or quality of your products or services. Like GREYHOUND for bus service or JAGUAR for cars, referring to the speed of transportation, or AMAZON referring to the variety of products offered by a retailer.
Arbitrary marks have real-world meanings, but they are not associated with the products or services being sold,like SHELL for gasoline, CAMEL for cigarettes, or APPLE for computers. Competitors would be unlikely to randomly come up with the same brand names for their own businesses due to the lack of direct association between the product and the brand.
Fanciful marks are completely made up, making it even more unlikely that any other business would come up with the same brand. Think of brands like PEPSI—this is a made up word, and its exact meaning is still up for debate. If you choose a fanciful mark like this—something not just arbitrary but unheard of before you created it—it is likely that mark would be used only when referring to your products. Other well-known examples of fanciful marks include KODAK, CLOROX, or ADIDAS.
How to Apply the Concept of Distinctiveness to Your Brand
Whether you're rebranding or establishing a new business, take a critical look at your brand name or logo and ask yourself: is this a well-known word or object that is commonly associated with what I am selling? Or is this a word I created, or one that exists but doesn’t usually refer to my product? The looser the match between your brand and your products, the more “random” and fanciful the mark, the stronger and more enforceable your brand.
It isn't necessarily a requirement that your brand be all the way on the fanciful side. As you can see from our examples above, even a mildly descriptive brand like American Airlines can be successfully trademarked. Please see our article about acquired distinctiveness for more information about how a descriptive business name can successfully apply for trademark protection in the USA.
No matter what brand you choose, it's always a good idea to do a trademark search first before you submit an application to the USPTO. If you're ready to register marks for your business, we can help you by answering your questions, advising on distinctiveness, performing trademark searches and submitting your trademark application. See our Trademark Application section for more information.
This blog was created & fact-checked by actual trademark attorneys from the IdeaLegal team. Click here to learn more about the intellectual property services our firm offers.