Distinctiveness is an important concept in the law governing trademarks and service marks. “Marks fall into five categories of distinctiveness: generic, descriptive, suggestive, fanciful, and arbitrary.”
A trademark may be eligible for registration, or registrable, if among other things it performs the essential trademark function, and has distinctive character. Registrability can be understood as a continuum, with "inherently distinctive" marks at one end, "generic" and "descriptive" marks with no distinctive character at the other end, and "suggestive" and "arbitrary" marks lying between these two points.
In trademark litigation, courts are most frequently asked to parse between "suggestive" and "descriptive" marks on the one hand, and between "descriptive" and "generic" marks on the other. This is because suggestive marks, like fanciful and arbitrary marks, are presumed to be entitled to trademark protection, while descriptive marks are entitled to protection if they have become known as representing the producer of the goods, and generic marks can never receive protection. The distinctive character of a term is closely related to the products or services in relation to which the term is used.
A general method for assessing the distinctive character of a mark is to consider a consumer's reaction to a mark. The mark may only be inherently registrable if the consumer has never encountered the mark before. On the other hand, the mark is unlikely to be inherently registrable if it informs him about any characteristic of the relevant products or services (e.g. whether they are delicious, large, spicy, black or sweet, in the case of fruit). In any other case the mark may not be registrable.
Therefore marks that identify or describe a product or service, or that are in common use, or that are used as geographical indications, generally cannot be registered as trademarks, and remain in the public domain for use by anyone. For example, a "generic" term such as "apple", or "descriptive" terms such as "red" or "juicy" could not be registered in relation to apples.
Primary consideration in the selection and use of trademarks should be given to marks which are inherently distinctive, as they possess the strongest distinctive character and do not require evidence of use to establish acquired distinctiveness. A fanciful, arbitrary, or suggestive term can be inherently distinctive and registrable without proof of acquired distinctiveness.
Although these categories are most easily applied in relation to trademarks comprising words, the same general principles are applied in relation to all kinds of trademarks. For example, a pine tree shape is descriptive when used on pine-scented products.
A trademark with no distinctive character (ie. a mark which is not inherently distinctive) is prima facie unregistrable. However, most jurisdictions may still allow such marks to be registered if the trademark owner can demonstrate, typically by reference to evidence of use, that consumers in the marketplace exclusively associate the mark, as used on the identified goods or in connection with the identified services, with a particular commercial origin or source (i.e., the trademark owner). "Use" may include authorized use by a licensee or other party. If the USPTO is satisfied that the evidence demonstrates that a mark has "acquired" distinctive character as a matter of fact, then the mark may be accepted for registration on the basis of acquired distinctiveness.
The nature and extent of acceptable evidence of use varies between jurisdictions, although the most useful evidence usually includes sales figures, details of advertising and promotional expenditure, and examples of promotional material. Consumer surveys may also help establish that consumers chiefly associate an otherwise non-distinctive mark with the trademark owner and its products or services. Generally, evidence of use may only be acceptable or relevant if it covers a certain period of time (e.g. three years prior to the filing date of the trademark application) and originates from within the jurisdiction where registration is sought.
The terminology of acquired distinctiveness is accepted in the European Union and Commonwealth jurisdictions such as Australia, Hong Kong and the United Kingdom, and the common law jurisdiction of the United States (which also uses the term "secondary meaning"). In the United States, if a trademark has been used for a continuous period of at least five years after the date of registration, the right to use the mark and the registration may become "incontestable" (e.g., invulnerable to cancellation for non-use, but not for becoming generic). In such cases the USPTO checks and confirm whether the request for incontestability meets formality requirements, but whether a registration is incontestable at law can only be determined during legal proceedings involving the registration.
- Philbrick v. eNom, Inc., 593 F.Supp.2d 352, 367 (D.N.H. 2009)(full-text).
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