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IP & Entertainment

Understanding Trademark Distinctiveness

What makes a mark distinct? A logo or brand, for purposes of trademark law, becomes distinct when it is capable of identifying the source of goods or services and of distinguishing those goods or services from the goods or services of others. Distinction can be acquired either inherently or through secondary meaning, which is based on the consumer’s experience with a mark.

Various factors that may be taken into consideration may include the: (a) association of a mark with a particular source by actual purchasers (typically measured by customer surveys); (b) length, degree, and exclusivity of use; (c) amount and manner of advertising; (d) amount of sales and number of customers; (e) intentional copying; and (f) unsolicited media coverage of the product embodying the mark.

The barometer for distinctiveness was introduced in the in the case of Abercrombie & Fitch Co. v. Hunting World, Inc.

Fanciful Marks

Fanciful marks comprise of entirely invented or “fanciful” signs or words. For example, Pepsi had no other meaning prior to its use as a soda brand.

Arbitrary Marks

Arbitrary marks are usually common words which are used in a meaningless or nonrelevant context. Some examples of these include Apple Computers, The Zebra.com, and Dominoes’ Pizza.

Suggestive Marks

Suggestive marks tend to indicate the nature, quality, or a characteristic of the products or services in relation to which it is used, but does not describe this characteristic, and requires imagination on the part of the consumer to identify the characteristic. Suggestive marks invoke the consumer’s perceptive imagination. Take Gorilla Glue for example, which suggests that the product’s durability and adhesion is as strong and tough as a gorilla (or even King Kong).

Descriptive Marks

Descriptive marks are usually terms with a dictionary meaning which is used in connection with products or services directly related to that meaning. Descriptive marks must acquire secondary meaning in order to be distinct. Take Good Burger (home of the good burger) for example. The term “good” is descriptive of the burgers they sell.

Additionally, merely altering the spelling of a word will not give the mark inherent distinction. This includes marks like Icees and TastyKake.

Generic Marks

Generic marks are never distinctive. Some marks like thermos and aspirin face genericide after widespread use.  Thus, a generic term is not capable of serving the essential trademark function of distinguishing the products or services of a business from the products or services of other businesses, and therefore cannot be afforded any legal protection.

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