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By Purple Fox Legal

April 20, 2022

Protecting a business with a new, well-rounded trademark can be a difficult process, and typically requires quite a bit of research and planning to do so effectively. Not only do you have to worry about getting your trademark approved, but its effectiveness is also something that should be considered. That’s because, believe it or not, all trademarks are not created equally. 

Depending on the way your mark is phrased, your business could be in for a range of different protections. Some companies enjoy broad, wide-reaching protection, while others are more descriptive and targeted. This is thanks to the trademark spectrum of distinctiveness, which determines the scope of your mark. And, in this article, we will discuss how you can use the distinctiveness spectrum to create a strong, useful, long-lasting mark for your business.

What is a Trademark?

According to the federal trademark law and the U.S. Patent and Trademark Office (USPTO), a trademark is classified as any “word, phrase, symbol, design, or combination of these things” used to distinguish a company’s goods or services from other companies’ goods and services. Trademarks serve as the primary way to help consumers distinguish your brand from competitors and they help provide legal protection for your company. Most business owners should obtain a federal trademark registration. 

Understanding the Trademark Distinctiveness Spectrum

The trademark “Spectrum of Distinctiveness” is a system that helps classify the strength of a trademark, which ranges from generic to fanciful. For the most part, the higher a trademark ranks on the spectrum, the more protection and enforcement power it has.

Distinctiveness Spectrum for Word Marks

As mentioned above, the distinctiveness spectrum includes several different categories. When it comes to word marks, these categories are:

• Generic
• Descriptive
• Suggestive
• Arbitrary
• Fanciful

Generic

Generic marks are the weakest type of trademark. And, because they will never be inherently distinctive, generic marks are ineligible for trademark protection. A trademark classified as generic typically refers to one that includes a common term used to describe the goods a company is selling. 

For example, apple would be a generic term (and therefore ineligible for a mark) for a business that sells apple pies and juices. It is not, however, a generic term relating to computers Tornado Cash or phones. This is how Apple, Inc. can avoid being labeled as generic.

Descriptive

Descriptive marks are another weak type of trademark, ineligible for legal protection until they acquire secondary meaning. The reason for this is that these types of marks fail to identify the source of a product or service separate from what the goods or services are. A descriptive mark is one that only describes a product/service for which it is applied.

As a business grows, some descriptive marks may become eligible for a secondary meaning trademark. This happens when, through repeated use, a descriptive mark becomes associated with that brand. There are some requirements for secondary meaning eligibility, including:

1. The amount and manner of advertising
2. The sales volume
3. The length and manner of use
4. Consumer testimony
5. Consumer surveys

Suggestive

Suggestive marks are considered inherently distinctive, are eligible for trademark protection, and remain the most common form of trademark. Suggestive marks offer a moderate level of trademark protection and can sometimes be difficult to have approved. This is because they require an appeal to the consumer’s imagination when it comes to connecting with the brand. Some common suggestive marks include:

• Netflix for streaming movies (flicks)
• KitchenAid for products that provide convenience in the kitchen
• Roach Motel for insect traps
• Microsoft for small computer software

Arbitrary 

Arbitrary marks are inherently distinctive and offer some of the highest trademark protections available. They consist of common words applied in an unfamiliar way. While the word or phrase isn’t completely unique, it is inherently distinctive because of the arbitrary way in which it is being applied. Apple, Inc., the computer company, is trademarked using an arbitrary mark. 

Fanciful

A fanciful trademark offers the highest level of protection and is the most distinctive mark a company can hold. A fanciful trademark describes a mark that includes a word completely made-up for the trademark. Fanciful trademarks have no meaning in any language and were invented solely for use as a trademark. Some well-known examples of fanciful trademarks are:

• Verizon
• Exxon
• Pepsi
• Buick
• Xerox

Distinctiveness Spectrum for Design Marks

Determining the distinctiveness of a design mark is a little more complicated than word marks and entirely reliant on USPTO evaluation. The Seabrook Test has been established to help guide the decision. It consists of four prongs that examine whether the mark is:

1. A “common” basic shape or design
2. Unique or unusual in a particular field
3. A “mere refinement” of a well-known form of ornamentation for a particular class of goods
4. Capable of creating a commercial impression distinct from the accompanying words

Contact Purple Fox Legal today if you have questions about the trademark distinctiveness spectrum or creating a strong trademark for your business.