Free Consultation 651-256-9480

Blog

Making Sure your Trademark is "Inherently Distinctive" when Filing with the USPTO

Posted by Isabel Fox | Jun 30, 2021 | 0 Comments

What is a trademark?

A trademark is a distinguishable word, symbol, slogan, or figure which identifies products or services from a specific source and distinguishes from those of others. Here are some classic examples of trademarks:

  • Word – Coca-Cola is an often cited example of the enduring nature of trademark protection, especially when compared to the twenty year lifetime of an issued patent. The trademark application for the word mark “Coca-Cola” was filed in 1892, and issued in early 1893.[i] Because Coca-Cola® has been used in commerce by The Coca Cola Company ever since, the trademark persists.
  • Symbol – McDonald's Golden Arches are one of the most iconic logos in existence, and the logo design originally derived from the architecture of the earliest McDonald's burger stands.[ii] The McDonald brothers worked with architect Stanley Clark Metson to design a building that would distinguish itself from surrounding business, and settled on a design with one golden arch on either side of the building.[iii] The Golden Arches logo was created to honor the building design, and remains today as an internationally-recognized symbol of the fast food chain.
  • Slogan – State Farm's “Like a Good Neighbor, State Farm is There” is one of the most recognizable slogans, even among the crowded space of insurance company advertisements. The familiar line is generally accompanied by an equally familiar jingle and recited by “Jake from State Farm” alongside any number of A-list celebrities, including, for example, Patrick Mahomes, Paul Rudd, Drake, and Aaron Rodgers in a single commercial first aired during Super Bowl LV.[iv]
  • Figure – Geico's talking gecko has been a mainstay in television commercials and print advertising for over two decades. But did you know that the gecko, whose name is Martin, is a result of the 1999 Screen Actors Guild strike that prevented advertisers from using live actors?[v] Even upon the return of live actors (remember the Cavemen?), the Geico gecko retained his position at the top of the roster of Geico mascots, and, arguably, all insurance figures.
  • Combination of Word and Symbol – The Nike Swoosh has become one of the world's most recognizable brand logos. People unmistakably associate it with Nike products, which has allowed Nike to differentiate its products from other apparel and shoe wear brands. Did you know the Swoosh logo was created in 1971 by a graphic design student at Portland State University? Upon seeing it, Phil Knight, co-founder of Nike, responded, “I don't love it, but I think it will grow on me.”[vi]

According to United States law 15 U.S.C. §1127, “The term ‘trademark' includes any word, name, symbol, or device, or any combination thereof – (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”[vii]

Two icons are used to indicate a trademark: ™ and ®. However, only ® indicates a registered trademark or a mark that is formally registered with the USPTO.

Both registered and unregistered marks are subject to protection under the Lanham Act, also known as the Trademark Act of 1946 (codified in 15 U.S.C. Chapter 22). To be recognized as a trademark, whether the mark is registered or unregistered, it must “identify and distinguish” goods. In other words, a mark must have distinctiveness – either inherent distinctiveness or acquired distinctiveness. In the case of registering a new mark, inherent distinctiveness is generally the objective, as Applicants are not required to prove acquired distinctiveness.

Why Having a Secured Trademark is Essential

As mentioned above, both registered and unregistered trademarks have protection under the Lanham Act. However, registered trademarks are subject to more robust statutory protection, including achieving an “incontestable status,” which may be granted following five years of continuous use under 15 U.S.C. §1065.[viii] Once a registered mark has achieved incontestable status, the grounds upon which the mark's validity may be challenged are significantly limited. For example, the validity of an incontestable trademark may be challenged if it is believed the mark registration was obtained fraudulently, if the mark has been abandoned, or if the mark is functional, among only a few other reasons.[ix]

Registration of a trademark also “serves as nationwide constructive notice of ownership and use of the mark under 15 U.S.C. §1072.”[x] In addition, according to 19 U.S.C. §1526, it is illegal to import foreign-manufactured merchandise fraudulently bearing a registered trademark owned by a U.S. citizen or U.S. corporation/association.[xi] Registration of a trademark, as well as filing an affidavit or declaration of incontestability of a registered mark, are just two of the many ways a trademark lawyer can help protect and strengthen your intellectual property.

How Trademarks are Considered

When evaluating a trademark application for registration, the USPTO uses a sliding scale to distinguish between strong and weak marks. On the strong end of the scale are fanciful, arbitrary, and suggestive marks. On the weak end of the scale are descriptive and generic marks.

Fanciful marks include invented terms where the only meaning connected with the term relates to the goods and services associated with the mark.

Arbitrary marks include actual, real words with definitions unrelated to the goods and services associated with the mark. Fanciful and arbitrary marks tend to be the strongest trademarks.

Suggestive marks include terms that may suggest, or hint at, some quality of the goods and services but do not fall to the level of outright describing the goods and services (and therefore are not descriptive marks).

Descriptive terms lend themselves to weaker trademarks, as they tend to describe some quality of the goods and services without making clear the source of the goods and services. Descriptive marks may also only be eligible for registration in certain circumstances, such as through acquired distinctiveness. Lastly, generic terms cannot be trademarked as they do not identify the source of goods and services.

To cite a few examples included on the USPTO website:[xii]

  • Fanciful: Exxon® for petroleum
  • Arbitrary: Apple® for computers
  • Suggestive: Coppertone® for sun-tanning products
  • Descriptive: “Creamy” for yogurt
  • Generic: “Bicycle” for bicycles

As you consider a trademark for your business, we urge you to use a fanciful, arbitrary, or suggestive term, as these terms are inherently distinctive. If possible, consider using fanciful or arbitrary words to maximize the strength of your trademark. The goal is to ensure that consumers see your trademark and immediately think of your business and the goods and services you offer rather than any goods and services provided by a different company.

It should be noted that, concerning their use in trademark law, the terms “fanciful,” “arbitrary,” “suggestive,” and “non-generic” are derived in common law, or law developed based on judicial proceedings rather than statutory law. So too is the concept of inherent distinctiveness of source, which, as mentioned previously, is generally the standard of establishing distinctiveness for a mark going through the registration process.

What Does it Mean to be “Inherently Distinctive” in a Trademark?

As defined by the United States Supreme Court in Wal-Mart Stores, Inc. v. Samara Bros., Inc., a trademark qualifies as inherently distinctive if “its intrinsic nature serves to identify a particular source.” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210 (2000).[xiii] Explained another way by the Supreme Court, “fanciful,” “arbitrary,” and “suggestive” marks (i.e., inherently distinctive marks) “almost automatically tell a customer that they refer to a brand.” Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 162-63 (1995) (emphasis in original).[xiv]

Inherent distinctiveness was notably discussed in detail by the Second Circuit in the groundbreaking case Abercrombie & Fitch Co. v. Hunting World, Inc., which established the “Abercrombie Spectrum,” the “sliding scale” mentioned above.

The case centered around the mark “Safari,” which Abercrombie & Fitch (“A&F”) registered for use on men's and women's outer garments, including hats and shoes, as well as sporting goods.[xv]

A&F alleged that Hunting World (“HW”) infringed its mark by using the terms “Minisafari” and “Safariland” to market sporting apparel, including hats and shoes. A&F argued in the complaint that “Continuation of HW's acts would confuse and deceive the public and impair ‘the distinct and unique quality of the plaintiff's trademark.'”[xvi]

In response, HW sought cancellation of all of A&F's registered trademarks using the word “Safari” and claimed that “the word ‘safari' is an ordinary, common, descriptive, geographic, and generic word…commonly used and understood by the public to mean and refer to a journey or expedition, especially for hunting or exploring in East Africa, and to the hunters, guides, men, animals, and equipment forming such an expedition.”[xvii] Analysis by the Second Circuit of the term “Safari” concerning the definitions of “fanciful,” “arbitrary,” “suggestive,” “descriptive,” and “generic” found that:[xviii]

  1. “Safari” had become generic when applied to specific types of clothing
    1. Result: no longer a valid trademark, and one of A&F's registrations was canceled
  2. “Safari” had not become generic when applied to boots or shoes and was either a suggestive mark or a “merely descriptive” mark
    1. Result: still a valid trademark, even if “merely descriptive” because the mark had achieved incontestable status under the Lanham Act

As a result of the case, A&F lost some, but not all, of their registered trademarks. A quick search of the A&F website for the term “safari” showed no results, so it would be fair to say that the more lasting legacy of Abercrombie & Fitch Co. v. Hunting World, Inc. is the establishment of the “Abercrombie Spectrum,” which has since been used by the USPTO in evaluating trademark applications for registration. Though discussed above, it bears repeating that marks deemed “arbitrary,” “fanciful,” or “suggestive” are determined to be inherently distinctive of the source of the goods and services. In contrast, “descriptive” marks require a “secondary meaning” to obtain trademark registration on the Principal Register. This “secondary meaning” is also known as “acquired distinctiveness.”

What Happens if the USPTO Finds Your Mark is Not Inherently Distinctive

Request Reconsideration

Like patent applications, trademark applications are reviewed by a USPTO examiner. After the application is filed, the examiner issues a communication to the Applicant, known as an Office Action. The Office Action states whether the trademark is allowed or rejected and provides the basis for the rejection. The Applicant may respond to the Office Action by providing arguments to support their position or amendments to the application. The first Office Action is typically considered a non-final Office Action. Any second and subsequent Office Actions are commonly referred to as final Office Actions. Applicants can request reconsideration from the examiner within six months of issuing the final rejection, or final Office Action.[xix]

File an Appeal

An Applicant may also, under 15 U.S.C. §1070, file an appeal to the Trademark Trial and Appeal Board (“TTAB”) to overturn the examiner's decision to deny the registration. If the TTAB agrees with the examiner and refuses to register the trademark, the Applicant may, if they believe the TTAB decision to be in error, file a request for “rehearing, reconsideration, or modification of a decision.”[xx] It is important to note that additional evidence may not be introduced, nor should an Applicant use a second appearance before the TTAB to re-argue the previously presented points. As stated in the TTAB Manual of Procedure, “the request normally should be limited to a demonstration that, based on the evidence properly of record and the applicable law, the Board's ruling is in error and requires appropriate change.”[xxi]

Applicants may also seek relief through the U.S. Court of Appeals. Under 15 U.S.C. §1071, an Applicant may appeal the decision of the TTAB or Director (as applicable) to the U.S. Court of Appeals for the Federal Circuit.[xxii]

Rather than appealing to the U.S. Court of Appeals for the Federal Circuit, 15 U.S.C. §1071 also allows Applicants to pursue civil action to obtain a trademark registration on the Principal Register.[xxiii] Whether the Applicant seeks relief from the U.S. Court of Appeals or through a civil action, 15 U.S.C. §1071 states that “no final judgment shall be entered in favor of an Applicant under section 1051(b) of this title before the mark is registered, if such Applicant cannot prevail without establishing constructive use under section 1057(c) of this title.”[xxiv] Section 1057(c) states that an application for registration constitutes constructive use.[xxv] In other words, an Applicant with a “bona fide intention to use the mark in commerce” (§1051(b)) will not be able to establish use if the Applicant relies upon their own trademark application to demonstrate the use of the mark.

Registration through Acquired Distinctiveness

If all other efforts, including reconsideration and appeal, are exhausted, an Applicant can pursue registration of their mark on the grounds of acquired distinctiveness (i.e., secondary meaning). One example of a descriptive mark that is nonetheless registered on the Principal Register is American Airlines®. Though initially a merely descriptive name for a U.S.-based airline, American Airlines® has acquired distinctiveness as a specific air travel provider.

As stated in 15 U.S.C. §1052(f): “The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the Applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the Applicant in commerce for the five years before the date on which the claim of distinctiveness is made.”[xxvi] In addition to or in place of five years' use as stated above, two other arguments may be made for the existence of acquired distinctiveness:[xxvii]

  1. Prior registrations: “A claim of ownership of one or more active prior registrations on the Principal Register of the same mark for goods or services that are sufficiently similar to those identified in the pending application” (37 C.F.R. 2.41(a)(1))
  2. Other evidence: “Other appropriate evidence of acquired distinctiveness” (37 C.F.R. 2.41(a)(3))
    1. Examples include affidavits, declarations, depositions, survey evidence, market research, and advertising expenditures, among others[xxviii]

Though it is possible to register a mark on the Principal Register by demonstrating acquired distinctiveness, inherent distinctiveness is still the recommended path toward registration. Registering an inherently distinctive trademark is a faster process than proving acquired distinctiveness and, therefore, extends the life of the trademark because the registration can be achieved sooner.

As an example, consider the following: applications to register an inherently distinctive (i.e., fanciful, arbitrary, or suggestive) mark (“Fanciful Mark”) and a not inherently distinctive (i.e., descriptive) mark (“Descriptive Mark”) may be filed on the same day. Five years later, the owner of the Fanciful Mark may file for incontestable status of their registered mark, while the owner of the Descriptive Mark is just then filing for registration via acquired distinctiveness. In the meantime, the owner of the Fanciful Mark has enjoyed the additional legal protections offered by a registered trademark (as well as the use of the “®” symbol). In contrast, the owner of the Descriptive Mark has fewer protections against infringement (and is still using the “T.M.” symbol). Additionally, the owner of the Descriptive Mark is not guaranteed a registered trademark, though they may believe acquired distinctiveness has been achieved.

The upshot is that the trademark process is more efficient if the mark is inherently distinctive. Applicants are encouraged to use fanciful, arbitrary, or suggestive marks whenever possible.

Conclusion

Registering a trademark requires that the mark is distinctive, either inherently by virtue of the nature of the mark, or through distinctiveness acquired over time. Inherently distinctive marks (i.e., fanciful, arbitrary, or suggestive marks) are the strongest candidates for trademark registration by the USPTO and may be registered sooner than marks that are not inherently distinctive. Gallium Law has significant trademark experience. We would be happy to assist you in strengthening your brand and increasing the value of your business. Please call us at 651-256-9480 or fill out this Contact Form to speak with us before it's too late.

[i] https://trademarks.justia.com/700/22/coca-70022406.html

[ii] https://online.ucpress.edu/jsah/article-abstract/45/1/60/57660/The-Origins-of-McDonald-s-Golden-Arches?redirectedFrom=fulltext

[iii] https://www.businessinsider.com/mcdonalds-golden-arches-history-2016-7

[iv] https://www.youtube.com/watch?v=lvpq2OjmJvg

[v] https://medium.com/illumination-curated/the-genius-behind-the-geico-gecko-100ee1455546

[vi] http://www.todayifoundout.com/index.php/2013/06/the-creator-of-the-nike-swoosh-logo-was-originally-paid-only-35-for-the-design/

[vii] https://www.law.cornell.edu/uscode/text/15/1127

[viii] https://www.law.cornell.edu/wex/trademark

[ix] https://tmep.uspto.gov/RDMS/TFSR/current#/current/sec-7cea1de2-b80b-4aab-8760-9a7c325b1ff5.html

[x] https://www.law.cornell.edu/wex/trademark

[xi] https://www.law.cornell.edu/uscode/text/19/1526

[xii] https://www.uspto.gov/trademarks/basics/strong-trademarks

[xiii] https://scholar.google.com/scholar_case?case=11551321958641509496&q=wal-mart+stores+v.+samara+bros&hl=en&as_sdt=2006&as_vis=1

[xiv] https://www.law.cornell.edu/supct/html/93-1577.ZO.html

[xv]https://scholar.google.com/scholar_case?case=9011105700430131407&q=inherently+distinctive+trademark&hl=en&as_sdt=4,24,60,85,87,92,97,113,128,148,150,155,160,189,190,256,257,273,274,284,285,319,320,336,337,347,348,382

[xvi] IBID

[xvii] IBID

[xviii] IBID

[xix] https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-700d1e2165.html

[xx] https://tmep.uspto.gov/RDMS/TBMP/current#/current/sec-22af0310-a5a3-47f6-a70c-3204608dc123.html

[xxi] IBID

[xxii] https://www.law.cornell.edu/uscode/text/15/1071

[xxiii] IBID

[xxiv] IBID

[xxv] https://www.law.cornell.edu/uscode/text/15/1057#c

[xxvi] https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e10316.html

[xxvii] IBID

[xxviii] https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e11238.html

About the Author

Comments

There are no comments for this post. Be the first and Add your Comment below.

Leave a Comment

Get Started Today

No matter where you are in your process, we'll help you understand the role of IP in your business. After all, tomorrow belongs to the people who prepare for it today.

Contact Us for a Free & Personal Consultation

Office Location

By appointment only, telephone and virtual meetings available.
445 Minnesota Street
Suite 1500
St. Paul, MN 55101

Menu