User Contributed Dictionary
- The property of being suggestive.
Extensive Definition
Trademark distinctiveness is an important concept
in the law governing trademarks and service
marks. A trademark may be eligible for registration, or
registrable, if amongst other things it performs the essential
trademark function, and has distinctive character. Registrability
can be understood as a continuum, with "inherently distinctive"
marks at one end, "generic" and "descriptive" marks with no
distinctive character at the other end, and "suggestive" and
"arbitrary" marks lying between these two points. This part of
registration is known as Section 3 of the trademark act in the UK
as opposed to Section 5 which is concerned with prior rights of
others. A mark must satisfy both sections to become
registered.
The spectrum of distinctiveness
Courts often speak of marks falling along the
following "spectrum of
distinctiveness":
Fanciful marks
A fanciful / inherently distinctive trademark is prima facie registrable, and comprises an entirely invented or "fanciful" sign. For example, "Kodak" had no meaning before it was adopted and used as a trademark in relation to goods, whether photographic goods or otherwise. Invented marks are neologisms which will not previously have been found in any dictionary.Arbitrary marks
An arbitrary trademark is usually a common word which is used in a meaningless context (e.g. "Apple" for computers). Such marks consist of words or images which have some dictionary meaning before being adopted as trademarks, but which are used in connection with products or services unrelated to that dictionary meaning. Arbitrary marks are also immediately eligible for registration. Salty would be an arbitrary mark if it used in connection with telephones, e.g. Salty Telephones, as the term "salt" has no particular connection with such products.Suggestive marks
A suggestive trademark tends to indicate the nature, quality, or a characteristic of the products or services in relation to which it is used, but does not describe this characteristic, and requires imagination on the part of the consumer to identify the characteristic. Suggestive marks invoke the consumer’s perceptive imagination. An example of a suggestive mark is Blu-ray, a new technology of high-capacity data storage.Descriptive marks
A descriptive mark is a term with a dictionary meaning which is used in connection with products or services directly related to that meaning. An example might be Salty used in connection with saltine crackers or anchovies. Such terms are not registrable unless it can be shown that distinctive character has been established in the term through extensive use in the marketplace (see further below). Lektronic was famously refused protection by the USPTO on ground of being descriptive for electronic goods.Generic marks
A generic term is the common name for the products or services in connection with which it is used, such as "salt" when used in connection with sodium chloride. A generic term is not capable of serving the essential trademark function of distinguishing the products or services of a business from the products or services of other businesses, and therefore cannot be afforded any legal protection. This is because there has to be some term which may generally be used by anyone—including other manufacturers—to refer to a product without using some organization's proprietary trademark. Marks which become generic after losing distinctive character are known as genericized trademarks.Assessing distinctiveness
In trademark litigation, courts are most frequently asked to parse between suggestive and descriptive marks on the one hand, and between descriptive and generic marks on the other. This is because suggestive marks, like fanciful and arbitrary marks, are presumed to be entitled to trademark protection, while descriptive marks are entitled to protection if they have become known as representing the producer of the goods, and generic marks can never receive protection. It can be seen from the examples above that the distinctive character of a term is closely related to the products or services in relation to which the term is used.A general method for assessing the distinctive
character of a mark is to consider a consumer's reaction to a mark.
The mark may only be inherently registrable if the consumer has
never encountered the mark before. On the other hand, the mark is
unlikely to be inherently registrable if it informs him about any
characteristic of the relevant products or services (e.g. whether
they are delicious, large, spicy, black or sweet, in the case of
fruit). In any other case the mark may not be registrable.
Another example of a descriptive mark would be a
geographical word or phrase that merely indicates the origin of the
product or service. For example, Houston
based ice
cream might find that the name "Houston ice cream" is denied
trademark protection on the grounds that the word Houston is merely
descriptive. However, they might have better luck with the name
"North Pole ice cream". In the latter case, although North Pole is
a geographical location, the ice cream is not actually made at the
North
Pole, and no reasonable person would assume that the phrase
North Pole is literally descriptive.
Therefore marks that identify or describe a
product or service, or that are in common use, or that are used as
geographical
indications, generally cannot be registered as trademarks, and
remain in the public
domain for use by anyone. For example, a generic term such as
"apple", or descriptive terms such as "red" or "juicy" could not be
registered in relation to apples.
Primary consideration in the selection and use of
trademarks should be given to marks which are inherently
distinctive, as they possess the strongest distinctive character
and do not require evidence of use to establish acquired
distinctiveness. A fanciful, arbitrary, or suggestive term can be
inherently distinctive and registrable without proof of acquired
distinctiveness. Although these categories are most easily applied
in relation to trademarks comprising words, the same general
principles are applied in relation to all kinds of trademarks. For
example, a pine tree shape is descriptive when used on pine-scented
products.
Acquired distinctiveness
A trademark with no distinctive character (ie. a mark which is not inherently distinctive) is prima facie unregistrable. However, most jurisdictions may still allow such marks to be registered if the trademark owner can demonstrate, typically by reference to evidence of use, that consumers in the marketplace exclusively associate the mark, as used on the identified goods or in connection with the identified services, with a particular commercial origin or source (ie. the trademark owner). "Use" may include authorized use by a licensee or other party. If the trade marks office is satisfied that the evidence demonstrates that a mark has "acquired" distinctive character as a matter of fact, then the mark may be accepted for registration on the basis of acquired distinctiveness.The nature and extent of acceptable evidence of
use varies between jurisdictions, although the most useful evidence
usually includes sales figures, details of advertising and
promotional expenditure, and examples of promotional material.
Consumer surveys may also help establish that consumers chiefly
associate an otherwise non-distinctive mark with the trademark
owner and its products or services. Generally, evidence of use may
only be acceptable or relevant if it covers a certain period of
time (e.g. three years prior to the filing date of the trademark
application) and originates from within the jurisdiction where
registration is sought.
The terminology of acquired distinctiveness is
accepted in the European
Union and Commonwealth
jurisdictions such as Australia,
Hong
Kong and the United
Kingdom, and the common law jurisdiction of the United
States (which also uses the term secondary meaning). In the
U.S., if a trademark has been used for a continuous period of at
least five years after the date of registration, the right to use
the mark and the registration may become "incontestable" (eg.
invulnerable to cancellation for non-use, but not for becoming
generic).
In such cases the
USPTO checks and confirm whether the request for
incontestability meets formality requirements, but whether a
registration is incontestable at law can only be determined during
legal proceedings involving the registration.
The essential function of a trademark is to
exclusively identify the commercial source or origin of products or
services, such that a trademark, properly called, indicates source
or serves as a badge of origin. The use of a trademark in this way
is known as trademark use. Certain exclusive rights attach to a
registered mark, which can be enforced by way of an action for
trademark infringement, while unregistered trademark rights may be
enforced pursuant to the common law tort of passing off.
It should be noted that trademark rights
generally arise out of the use and/or registration (see below) of a
mark in connection only with a specific type or range of products
or services. Although it may sometimes be possible to take legal
action to prevent the use of a mark in relation to products or
services outside this range (eg. for passing off), this does not
mean that trademark law prevents the use of that mark by the
general public. A common word, phrase, or other sign can only be
removed from the public domain to the extent that a trademark owner
is able to maintain exclusive rights over that sign in relation to
certain products or services, assuming there are no other trademark
objections. For a case study in both concepts, see Apple Corps and
its disputes with Apple, Inc.
Maintaining distinctiveness
If a court rules that a trademark has become "generic" through common use (such that the mark no longer performs the essential trademark function and the average consumer no longer considers that exclusive rights attach to it), the corresponding registration may also be ruled invalid.For example, the Bayer company's
trademark "Aspirin" has been
ruled generic in the United States, so other companies may use that
name for acetylsalicylic
acid as well (although it is still a trademark in Canada). Xerox for
photocopiers and Band-Aid for
adhesive bandages are both trademarks which are at risk of
succumbing to genericide in certain countries, which the respective
trademark owners actively seek to prevent. In order to prevent
marks becoming generic, trademark owners often contact those who
appear to be using the trademark incorrectly, from web page authors
to dictionary editors, and request that they cease the improper
usage.
The proper use of a trademark means using the
mark as an adjective,
not as a noun or a verb, though for certain
trademarks, use as nouns and, less commonly, verbs is common. For
example, Adobe sent
e-mails to many web authors using the term "photoshopped" telling them
that they should only use the term "modified by Adobe® Photoshop®
software." Xerox has also purchased print advertisements declaring
that "you cannot 'xerox' a document, but you can copy it on a Xerox
Brand copying machine." Another popular example is the use of the
word "frappuccino"
by Starbucks
customers to mean any blended coffee beverage, though employees are
instructed to only say "frappuccino blended coffee" or "frappuccino
blended cream" when referring to such drinks. This rule is not
hard-and-fast, however; for example, Lexis-Nexis has a U.S.
trademark registration for "Shepardize,"
Reg. No. 1743711, and defines "Shepardizing on a web
page as "the process of looking up citations" in "a series of
books called Shepard's Citations." Such efforts may or may not be
successful in preventing genericism in the long run, which depends
less on the mark owner's efforts and more on how the public
actually perceives and uses the mark. In fact, legally it is more
important that the trademark holder visibly and actively seems to
attempt to prevent its trademark from becoming generic, regardless
of real success.