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In today’s competitive marketplace, a strong trademark is essential for any business. It acts as your brand identity, fostering consumer recognition and trust. But with so many brands vying for attention and considering the time and cost associated with trademark registration, choosing the right trademark that sticks in the minds of your customers or clients and is likely to be approved for registration can be a challenge.

The United States Patent and Trademark Office (the “USPTO”) is on a substantial backlog, typically taking 6 to 9 months before assigning an application to an examiner for review. If the examining attorney does not find any issues, they will approve the application and publish it in the Official Gazette for a 30-day opposition period during which time members of the public will have the opportunity to oppose the mark. If no one opposes the registration or requests an extension of time to do so, the USPTO will issue your registration within 90 days of the close of the publication period. As such, the trademark application process typically takes over a year under the best circumstances, making it extremely important to consider and weigh the viability of your application prior to filing to avoid the time and cost associated with refiling or responding to USPTO office actions.

In order to properly consider the viability of your application, it is important to understand the concept of “trademark distinctiveness.” Trademark distinctiveness can best be described as a spectrum of how creative, unique and memorable your chosen trademark is, which will directly impact how easy it is to register and enforce. On this spectrum, trademarks can be categorized into the five levels of distinctiveness which are described below from weakest to strongest.

The Spectrum of Trademark Strength

  • Generic Marks (Unprotectable): These marks directly reference the product or service offered. Imagine trying to trademark “APPLE” for apples – if a registration were granted for this mark, legitimate competition from other sellers of apples wishing to accurately describe their product would be hindered. For that reason, the USPTO will reject any applications for generic marks.
  • Descriptive Marks (Weak): Descriptive marks describe a characteristic or function of the product or service. “The Cupcake Shoppe,” for example, describes a cupcake shop. While it might be the only cupcake shop in the area operating under that name or using that less common spelling of “shop,” registering such marks tends to be difficult, and their protection is limited. To gain protection and registrability, the owner of a descriptive mark needs to prove that the mark has acquired distinctiveness meaning consumers have come to associate it with their specific brand, goods, or services. Acceptable evidence of acquired distinctiveness includes i) continued use in commerce for five or more years, ii) prior registration of a similar mark, or iii) any actual evidence that consumers have come to associate the mark with your brand, goods, or services (typically, this evidence would include any materials showing the success of extensive advertising of the mark or showing notoriety amongst consumers). Descriptive marks are more difficult to register, but not impossible.
  • Suggestive Marks (Stronger): Suggestive marks take things a step further. They hint at the product or service without explicitly describing it. Think “Chick-fil-A”. The name suggests a service related to chicken, but it requires some imagination from the consumer to make the connection. The USPTO is more likely to approve applications for suggestive marks, however, the line between descriptive and suggestive is not always clear, and the USPTO examiner reviewing your application may take a different view than you or your attorney. For that reason, it is important to discuss your proposed mark with an experienced trademark attorney before submitting your application.
  • Arbitrary Marks (Strong): This second-best category includes existing words or symbols that have no inherent connection to the product or service. Think of how “APPLE” was used for computers. The word itself doesn’t tell you anything about the product, but it’s a real word that can be easily remembered. Arbitrary marks are readily registrable and enjoy broad protection due to their inherent distinctiveness.
  • Fanciful Marks (Strongest): Lastly, the holy grail of trademarks, fanciful marks are invented words or symbols with no meaning outside of the brand. “Google” is a perfect example – it has no meaning in everyday language, but it’s become synonymous with search engines. Fanciful marks are the easiest to register and receive the broadest protection because they are inherently distinctive.

Choosing Your Trademark Wisely

Now that you understand distinctiveness, consider these key takeaways:

  • Aim for a trademark that falls on the stronger end of the spectrum (suggestive, arbitrary, or fanciful). If that is not possible, discuss your mark with your attorney to determine the options that may still be available.
  • Remember, there are other factors to consider beyond distinctiveness, such as trademark availability and whether the mark resonates with your target audience, but it is, nevertheless, a crucial consideration when approaching the any trademark application.

Conclusion

A strong trademark is a valuable asset for any business. By understanding the spectrum of trademark distinctiveness, you can make informed decisions when choosing a mark that will effectively represent your brand and offer the legal protection you need. Remember, consulting with a trademark attorney can provide valuable guidance throughout the selection and registration process. If you are looking to register a trademark or need legal assistance with a trademark, please contact John Kellam or one of our trademark attorneys at Manning Fulton or visit our website at www.manningfulton.com/services/intellectual-property/ to review our trademark and intellectual property services.

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