Degree of Protection & The Spectrum of Distinctiveness

Posted by on Jun 4, 2013

So, you’ve got a mark in mind that you want to register, what do you do next? Find a trademark attorney, but before you do that, it’s important to understand how much protection your mark may receive or if it can be registrable as a trademark at all.

A prospective trademark owner, whether the mark be the name of the entity, the name of a product, or a slogan is analyzed for registrability based on the mark’s connection to its classes of goods or services.

After the classes of goods or services are identified in connection to an applicant’s mark, the trademark examiner will attempt to place the mark on a spectrum of distinctiveness: generic, descriptive, suggestive, arbitrary, and fanciful. The more distinctive the mark, the more likely the mark will receive immediate approval and will receive more trademark protection once it is registered.

Generic marks like “salt” or “light beer” are words that name the genus of the goods that they are used in connection with and are never registrable.

Descriptive marks like “Pizza Hut” in connection with the service of making and selling pizzas and “World Book” in connection with encyclopedias are words that describe an ingredient, qualities, features, purpose or characteristic of a product or service.  Free speech considerations require that they are registrable and receive protection only after secondary meaning is shown.

Suggestive marks like “Greyhound” in connection with the service of transportation of persons are words that tend to indicate the nature, quality, or characteristic of the product or service, but require consumers to use some imagination regarding the connection. In this example, greyhounds are dogs known for their speeds and the mark hopes to use that knowledge to convey that Greyhound’s services will quickly transport consumers to their destinations.

Arbitrary marks like “Apple” are words that have no meaningful connection to the good or services offered and fanciful marks are just made up words that have no known meaning in the English language.

The spectrum of distinctiveness is just some food for thought and an introduction to the nuances of trademark law.  Consulting an attorney as to the possibilities and success of your application is always a good option before investing in branding your business and your products.