Does Your Trademark Pass The “Distinctiveness Test”?

One of the questions I’m asked most often is, “Should I trademark it?”

The “it” in question is usually a business name, product name, or slogan. But you can also trademark a letter–or series of letters (IBM), a word (Panasonic), a string of words (“You’re in good hands with Allstate”), a sign (the golden arches), numbers (Boeing’s “747”), a symbol (Ralph Lauren’s polo player), or packaging ‘trade dress’ (the shape of the Coca Cola bottle), and the list goes on.

And the answer I give most often is…

“If you like it then you shoulda put a trademark on it.” (Sorry Beyoncé!)

Hey, it’s a much better answer than the typical lawyer-speak, which is… say it with me: “It depends.” 

However, if you can handle the truth (I promise not to do a Jack Nicholson impersonation), it actually does depend on one very big and important factor…

Distinctiveness.

How distinctive is the “device” (name, phrase, logo, etc.) you wish to trademark? Because the less distinctive it is, the less of a chance you have of being successful at getting it trademarked.

The purpose of a trademark device is to distinguish the source of goods of a company from that of another. The easiest, most distinguishable example is the Nike swoosh vs. Adidas three stripes. You’d have to live between several giant rocks and and a hard place to not know the difference.

So, the question to ask yourself is, how distinctive is the device I wish to trademark?

Here’s the test: Which of the following 5 categories, from “very distinctive” to “least distinctive,” does your device fit into?

trademarkFANCIFUL: This is a no-brainer. It’s distinctiveness is obvious because it’s completely made up–the word or phrase has no inherent meaning. For example, “Kleenex” had no prior meaning prior to its association with the tissue brand. Other examples include Google and Kodak.

ARBITRARY: Arbitrary marks use common words or symbols that have no direct relation to the product being sold. For example, Apple for computers, and Amazon for online sales.

SUGGESTIVE: Not as strong as a fanciful or arbitrary mark, a suggestive mark references the goods in question but requires the use of some imagination. “Microsoft,” a software company, is an example of a suggestive reference to computer software that is distinct enough to pass the test. Netflix is another example.

DESCRIPTIVE: This type of mark merely describes the product being sold. Such devices are not considered distinctive enough to warrant trademark protection unless the mark ends up achieving a secondary meaning and, in the mind of the consumer, creates an association between the device and the product. Take “Sharp” televisions, for example. Secondary meaning can be achieves through long-term use by extensive advertising that identifies the mark as representing a brand in the mind of the consumer.

GENERIC: A generic device is, well… too generic to make a brand stand out from that of another and would give an unfair advantage to one company over another. For example, “Bicycle” could not be trademarked as a brand because doing so would put too many bicycle manufacturers at a disadvantage in the marketplace.  Same for “Computer.” “Smartphone” is another example of a word that is considered too generic to be considered the brand name of one company alone.

So, next time you’re wondering if your product name, slogan, or logo is “trademarkable,” review the above categories to see if it would be considered distinctive enough to warrant trademark protection.

Questions? Book a 30-minute trademark consult.


Is your business “legally covered”? Are you sure you’re not EXPOSED? GO HERE to find out.

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