What Constitutes a Distinctive Mark in Trademark Law?

The predominant feature of a valid trademark is its distinctiveness. A trademark serves as an identifier of the origin of the goods and services of the manufacturer. The proper use of trademarks promotes the prevailing public policy that drives trademark law — that consumers should be able to easily identify the source of the product through its distinctive mark.

The courts have determined that there are four categories under which trademarks fall, each of which provides owners with distinct levels of protection.

Generic trademark. A generic mark is not afforded any protection under trademark law because it is too commonplace and universal to allow any one entity to declare ownership of it. Manufacturers who use a generic term cannot claim exclusive rights to utilize that term in connection with that product. For example, a manufacturer that sells televisions could not acquire a trademark for “television” brand televisions.

Descriptive trademark. A descriptive trademark describes the underlying product rather than suggesting a feature of that product. The law requires such products to attain “secondary meaning” in order to become protected trademarks since descriptive marks are not implicitly distinctive. A manufacturer or producer can acquire secondary meaning when the public distinguishes the mark as belonging to that particular manufacturer or producer rather than just representing the underlying item.

Suggestive trademark. A suggestive trademark, in contrast to a descriptive trademark, suggests a feature of the underlying product and requires the consumer to make an association between that mark and the item to which it refers. As the courts have stated, the consumer must use its “imagination, thought and perception” to determine the nature of the good. Well known examples of suggestive trademarks are the financial services institution, Citibank, and the automobile brand, Jaguar. These marks are well protected by trademark law.

Arbitrary or fanciful mark. Like suggestive trademarks, arbitrary or fanciful marks are highly unique, and are therefore accorded a considerable degree of trademark protection. An arbitrary mark has a familiar meaning but that meaning is totally unconnected with the goods or services it intends to denote. A popular example of an arbitrary trademark is Apple, the computer and media institution. A fanciful mark has no inherent meaning at all; it is invented by its creator. These types of marks include Exxon and Kodak. The high level of protection extended to these marks is reflective of their distinctiveness and the great likelihood of associating that mark with the source of the product.

Connors & Associates provides expert legal advice through an international network of attorneys specializing in all types of intellectual property law. Contact us at (949) 833-3622 or visit Connors & Associates online to learn more about our services or to schedule a consultation.

Dylan Connors

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