Understanding Trademark Distinctiveness and Its Importance

Distinctiveness is a crucial factor that sets trademarks apart. It enables them to identify and differentiate one merchant's goods or services from another. This article explores the scale of distinctiveness and the benefits it offers. It also explores strategies to prove and acquire trademark distinctiveness.

What is distinctiveness?

At its core, distinctiveness means a trademark's ability to:

Identify and distinguish one merchant's goods or services from another's. 

In most cases, distinctiveness is associated with inherently distinctive categories.

The scale of distinctiveness:

Trademarks are evaluated on a distinctiveness scale. This is to determine their eligibility for federal registration. This scale includes "not inherently distinctive" marks and "inherently distinctive" marks.

Not inherently distinctive marks:

"Not inherently distinctive marks" are trademarks that lack immediate uniqueness. They can't serve as strong identifiers of the source of goods or services.

Examples of such marks include "generic" and "merely descriptive" terms. Generic marks directly describe the product or service, like using "apple" for apples. Merely descriptive marks provide information about the product or service. An example of this is calling potato chips “crispy.”

These marks are usually not eligible for registration on the Principal Register of Trademarks without additional information.

To overcome this hurdle, trademark owners must demonstrate "acquired distinctiveness" or "secondary meaning." Essentially, they must show that consumers have come to associate the mark with a specific source over time — rather than seeing it as just a common or descriptive term.

Inherently distinctive marks:

"Inherently distinctive marks" are trademarks that stand out naturally and can be registered on the Principal Register without needing to prove they've gained distinctiveness over time. There are three types:

1. Suggestive marks: These hint at the product's nature, like "Coppertone" for sunscreen.

2. Arbitrary marks: These use common words in unrelated ways, such as "Apple" for computers.

3. Fanciful marks: These are made-up words, like "Clorox" or “Lysol.”

These marks are strong and easily protected because they're distinctive from the start.

Benefits of distinctiveness

Distinctive marks enable consumers to recognize and associate them directly with the goods or services they represent. This recognition is the result of extensive use and promotion of the mark.

How to acquire distinctiveness

Acquired distinctiveness isn't something you apply for in your trademark application.

It occurs when your mark has a "secondary meaning." Secondary meaning is when consumers associate your mark with your goods or services rather than its original meaning. Evidence for acquired distinctiveness can come from:

• Prior registrations
• Five years of continuous use in commerce
• Other appropriate evidence

How to prove acquired distinctiveness

To claim acquired distinctiveness, you need to show a strong connection between your mark and your goods or services in the minds of consumers. This is typically achieved by collecting and presenting various types of evidence:

1. Extent of use of the trademark or service mark: Showcase the widespread use of your mark. This includes how extensively it has been used in commerce, the geographic areas it covers, and the scope of your marketing efforts.

2. Duration of use of the same trademark: Highlight how long your mark has been consistently used. The longer the duration, the stronger the case for acquired distinctiveness.

3. Manner of use: Emphasize how prominently and consistently the same mark has been presented in connection with your goods or services.

4. Types of actual evidence: You can gather prima facie evidence through affidavits from individuals who can vouch for the mark's association with your business. You can also put together surveys that demonstrate consumer recognition. Or you can get consumer statements indicating recognition. 

By presenting this evidence, you can make a compelling case to establish acquired distinctiveness. This is a crucial step in securing legal protection for your trademark and ensuring its enduring value.

It's advisable to seek guidance from a trademark attorney to navigate the requirements and legal procedures of establishing acquired distinctiveness.

Examples of marks that have made the claim of acquired distinctiveness:

U-HAUL" initially described its service literally. But it evolved into a protectable trademark over time. Through consistent use, extensive advertising, and creating a solid link with consumers:

It's no longer seen as a description but as a specific brand of moving and rental trucks.

This transformation is a clear example of how a mark can gain distinctiveness through branding and consumer recognition.

Securing trademark distinctiveness: the key to registration and protection

Understanding trademark distinctiveness is essential for effective trademark registration and protection. It's critical in establishing consumer recognition and trust in your mark.

By providing the necessary evidence, you can prove and acquire distinctiveness. This ensures the long-term value of your trademark. Always consult with an attorney for specific legal advice about your unique situation.