Trademark Registration: The Spectrum of Distinctiveness

Business and product names are more or less eligible for Federal trademark registration depending upon where they lie along a “spectrum of distinctiveness.” 

That is, whether or not a name can be registered on a trademark will depend upon how uniquely it does or doesn’t identify the product or service to which it is attached. 

Trademark Registration: Fanciful Marks

The easiest mark to register is what is known as a “fanciful” mark. 

This is an invented word or phrase, made up for the specific purpose of use as a trademark. They are words that don’t exist in language outside of their commercial use in identifying the product or service at issue. 

Two examples are Kodak and Exxon. 

Trademark Registration: Arbitrary Marks

Next along the spectrum of distinctiveness are “arbitrary” marks. These are words which exist in current language usage but, when used to identify a particular product or service, do not in any way describe that product or service. 

An arbitrary mark doesn’t tell you anything about that good or service, in other words. 

An example would be Apple Computers. Computers are not made of apples (ideally). Thus, the mark is “arbitrary.” 

Trademark Registration: Suggestive Marks

A “suggestive” mark steps a little closer to the line of descriptiveness than fanciful or arbitrary marks. A suggestive mark will “suggest” some aspect or quality of the good or service which it identifies to consumers, while still leaving consumers to exercise some imagination in determining what that product or service actually is. 

Netflix and Airbus are examples of these sorts of marks. 

Trademark Registration: Descriptive Marks

At the dismal end of the spectrum like marks which are merely descriptive or misdescriptive. 

A mark is merely descriptive if describing an ingredient, characteristic, function, feature, purpose, or use of the good or service with which it is related. 

Likewise, a mark is descriptive if it “immediately conveys” knowledge of the good or service’s qualities, features, functions, or characteristics. 

An example might be something along the lines of “Red Basketballs” for a product which is—a red basketball. 

The attorney-examiner is required to issue an Office Action refusal of trademark registration applications for terms that are merely descriptive. 

Trademark Registration: Office Action Descriptiveness Refusals

An “Office Action” is the name of a refusal to accept for registration your trademark application by the attorney examiner assigned to your case by the US Patent and Trademark Office (USPTO), with which it is filed. 

Some Office Actions are “administrative,” requiring just a tweak in the description of the product or service. Others are “substantive,” requiring a formal Response by drafted by your Trademark Attorney. This is a form of litigation. 

A descriptiveness refusal is a highly substantive Office Action. If you filed your trademark registration application without a US-licensed attorney, you will need to hire one immediately upon receipt of such a refusal. 

It is important to understand from the outset that the USPTO examiner is only required to prove whether the mark “conveys an immediate idea” of an ingredient, quality, characteristic, feature, function, purpose, or use of the goods. 

The examiner is not required to prove that anyone else have used the mark, or that the term at issue describes every quality, characteristic, feature, function, etc., of the product or service. 

Trademark Registration & Descriptiveness Refusals: The Bottom Line

The bottom line is that with regard to trademark protection of your name or log, it doesn’t pay to go cheap after investing all of your resources and time into the development of the product itself. 

Once an Office Action is filed by the USPTO examiner, you have 6 months to Respond, or the application and the mark will be classified as Abandoned.

Retain a trademark attorney such as Attorney John Hilla to assist you with your search and your application to ensure the best results. 

Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting enterprises in every industry with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.

We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.

Click the “Register Your Trademark” button below to schedule your initial consultation and to begin your brand protection journey.