Understanding Descriptiveness and Trademark Distinctiveness in the U.S.

Trademark Descriptiveness and Trademark Distinctiveness are crucial factors to consider during brand development. Many of our trademark clients come to us with proposed trademarks that either partially or entirely describe the underlying product or service they offer. It is only natural to want to give consumers an idea of what your brand’s underlying goods or services are. But trademarks are essentially a license to exclude others from using certain words or phrases.

This right to exclude often comes into tension with free speech rights, including the right to have the ability to adequately describe your goods or services. If a company called Banana sells bananas and acquires a trademark for it, how could others in the banana industry ever hope to compete? To avoid issues such as this, trademarks law in the United States is based on the principle of distinctiveness.

For a trademark to be protected, it must be distinct. In other words, it must be at least somewhat unrelated to the underlying goods and services.

The Spectrum of Trademark Distinctiveness

Trademarks fall on a spectrum of trademark distinctiveness that ranges from generic terms (which cannot be protected) to arbitrary or fanciful marks (which receive the strongest protection). The more distinctive the mark, the easier it is to obtain and enforce trademark protection. The key categories of distinctiveness are: (1) Generic, (2) Descriptive, (3) Suggestive, and (4) Arbitrary or Fanciful.

Generic Marks

A generic mark is a term that refers to the general category or class of products or services. Generic terms cannot be trademarked because they do not distinguish the source of a product or service — they merely describe what the product is. Allowing a company to trademark a generic term would give them a monopoly over a word that everyone needs to use to describe similar goods.

Example: “Computer” for a computer company. No one can claim exclusive rights to the term “computer” because it is the common word for that product category.

Descriptive Marks

A descriptive mark describes a characteristic, quality, function, or feature of the product or service. These marks are not inherently distinctive and, therefore, are generally not eligible for trademark protection.

Example: “Creamy” for yogurt is descriptive because it directly describes a quality of the product.
That being said, descriptive marks are not entirely prohibited from obtaining registration. When a word or phrase has been used exclusively and for an extensive period of time, consumers will come to associate it with a particular company. This developed association is referred to as “acquired distinctiveness” or “secondary meaning.” A word or phrase that has developed secondary meaning is capable of being a trademark.

Example: “Holiday Inn” was originally a descriptive term for a hotel chain catering to travelers during holidays, but over time, it became associated specifically with that hotel brand, thereby acquiring distinctiveness.

Suggestive Marks

A suggestive mark indirectly refers to a characteristic of the product or service and requires some imagination, thought, or perception on the part of the consumer to understand the connection. Suggestive marks are inherently distinctive and qualify for trademark protection without needing to prove secondary meaning.

Suggestive marks strike a balance between descriptiveness and distinctiveness. While they suggest something about the product, they do not directly describe its features.

Example: “Netflix” for streaming services. The name suggests a connection between the internet (“Net”) and movies (“flix”) but requires consumers to think a little to make the connection.

Arbitrary or Fanciful Marks

Arbitrary marks are common words used in a completely unrelated context, while fanciful marks are invented or coined words with no meaning other than as a trademark. Both arbitrary and fanciful marks are considered highly distinctive and receive the strongest protection under U.S. trademark law. They do not describe any aspect of the product or service they represent, making them inherently strong identifiers of source.

Example of Arbitrary Marks: “Apple” for computers or “Amazon” for online marketplace services. While today these terms have become synonymous with these services, at the time the first were used, they were arbitrary as the words had absolutely no relation to the underlying services.

Example of Fanciful Marks: “Xerox” for photocopiers. This is a completely invented term and has no meaning outside of its use as a brand.

Why Trademark Distinctiveness Matters

The level of distinctiveness is crucial when determining whether a trademark qualifies for protection. The more distinctive a mark is, the stronger its protection under U.S. trademark law. While you may want to allow consumers to know what your goods or services are just from your trademark alone, doing so will most likely render it insufficiently distinctive for trademark purposes.

One final thought to keep in mind is that distinctiveness can change over time. Just as marks can acquire distinctiveness, they can also lose distinctiveness. The term “escalator” was once considered distinctive to the Otis Elevator Company. Over time, however, the public began referring to any moving staircase as an escalator, even if they were not made by Otis. Thus, the trademark that Otis owned for the term was eventually invalidated as the public no longer saw it as signifying the Otis Elevator Company. As such, distinctiveness is a bit of a double-edged sword.
It is important to not only create a distinctive mark from the beginning, but companies should also engage in efforts to preserve and maintain that distinctiveness.