A quick look at the importance of trademark distinctiveness

| Feb 23, 2021 | Trademark Law |

Trademark law might seem pretty simple on its face. After all, all you’re doing is associating a mark with your product, right? That’s true enough, but the issue is oftentimes a little more complicated than that. In one area where this is glaring is in distinctiveness.

The importance of mark distinctiveness

Marks come in a wide variety of forms. Some are merely generic in nature in that they only describe the type of class within which the good or product falls. These marks are not protected under the law. Not only will you more easily be able to register a mark that is distinctive, but you’ll also enjoy wider trademark protection.

Determining distinctiveness

There is a whole body of statutory and case law just on distinctiveness. It can be a quite complicated topic. But in general terms, those marks that receive the most protection are those that are fanciful or arbitrary. When it comes to names, for example, fanciful marks are those that are completely made up , like Pepsi. Arbitrary marks, on the other hand, use known terms that, while source identifying in nature, don’t necessarily describe the product. A perfect example of an arbitrary mark is Apple computers.

Suggestive marks can also receive trademark protection. These marks require a certain amount of thought to link them to the goods or services in question, which is different from descriptive marks that merely describe the product or goods in question. Marks that are purely descriptive cannot be registered and therefore cannot receive legal protection.

What this means for you

Distinctiveness can play an important role in your intellectual property portfolio. If your marks fall closer to the suggestive or descriptive area of the distinctiveness spectrum, then you might want to consider other ways to protect your brand. If you have fanciful or arbitrary marks, then you want to make sure that you are registering them and policing them so that you can take action against those who infringe upon them.

If you’re finding yourself facing trademark issues, then you might want to discuss your concerns with an attorney who is experienced in this area of the law.


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