Trademark distinctiveness
Encyclopedia
Trademark distinctiveness is an important concept in the law governing trademark
Trademark
A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or...
s and service mark
Service mark
A service mark or servicemark is a trademark used in some countries, notably the United States, to identify a service rather than a product. When a service mark is federally registered, the standard registration symbol ® or "Reg U.S. Pat & TM Off" may be used...
s. 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 "spectrumSpectrum
A spectrum is a condition that is not limited to a specific set of values but can vary infinitely within a continuum. The word saw its first scientific use within the field of optics to describe the rainbow of colors in visible light when separated using a prism; it has since been applied by...
of distinctiveness":
Fanciful marks
A fanciful / inherently distinctive trademark is prima faciePrima facie
Prima facie is a Latin expression meaning on its first encounter, first blush, or at first sight. The literal translation would be "at first face", from the feminine form of primus and facies , both in the ablative case. It is used in modern legal English to signify that on first examination, a...
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
Dictionary
A dictionary is a collection of words in one or more specific languages, often listed alphabetically, with usage information, definitions, etymologies, phonetics, pronunciations, and other information; or a book of words in one language with their equivalents in another, also known as a lexicon...
.
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 e.g. telephones such as in Salty Telephones, as the term "saltSalt
In chemistry, salts are ionic compounds that result from the neutralization reaction of an acid and a base. They are composed of cations and anions so that the product is electrically neutral...
" 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-rayBlu-ray Disc
Blu-ray Disc is an optical disc storage medium designed to supersede the DVD format. The plastic disc is 120 mm in diameter and 1.2 mm thick, the same size as DVDs and CDs. Blu-ray Discs contain 25 GB per layer, with dual layer discs being the norm for feature-length video discs...
, 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 marketplaceMarketplace
A marketplace is the space, actual, virtual or metaphorical, in which a market operates. The term is also used in a trademark law context to denote the actual consumer environment, ie. the 'real world' in which products and services are provided and consumed.-Marketplaces and street markets:A...
(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 trademarkGenericized trademark
A genericized trademark is a trademark or brand name that has become the colloquial or generic description for, or synonymous with, a general class of product or service, rather than as an indicator of source or affiliation as intended by the trademark's holder...
s.
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
Houston, Texas
Houston is the fourth-largest city in the United States, and the largest city in the state of Texas. According to the 2010 U.S. Census, the city had a population of 2.1 million people within an area of . Houston is the seat of Harris County and the economic center of , which is the ...
based ice cream
Ice cream
Ice cream is a frozen dessert usually made from dairy products, such as milk and cream, and often combined with fruits or other ingredients and flavours. Most varieties contain sugar, although some are made with other sweeteners...
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
North Pole
The North Pole, also known as the Geographic North Pole or Terrestrial North Pole, is, subject to the caveats explained below, defined as the point in the northern hemisphere where the Earth's axis of rotation meets its surface...
, 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 indication
Geographical indication
A geographical indication is a name or sign used on certain products which corresponds to a specific geographical location or origin...
s, generally cannot be registered as trademarks, and remain in the public domain
Public domain
Works are in the public domain if the intellectual property rights have expired, if the intellectual property rights are forfeited, or if they are not covered by intellectual property rights at all...
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 (i.e. a mark which is not inherently distinctive) is prima faciePrima facie
Prima facie is a Latin expression meaning on its first encounter, first blush, or at first sight. The literal translation would be "at first face", from the feminine form of primus and facies , both in the ablative case. It is used in modern legal English to signify that on first examination, a...
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 (i.e. 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
De facto
De facto is a Latin expression that means "concerning fact." In law, it often means "in practice but not necessarily ordained by law" or "in practice or actuality, but not officially established." It is commonly used in contrast to de jure when referring to matters of law, governance, or...
, 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
European Union
The European Union is an economic and political union of 27 independent member states which are located primarily in Europe. The EU traces its origins from the European Coal and Steel Community and the European Economic Community , formed by six countries in 1958...
and Commonwealth
Commonwealth of Nations
The Commonwealth of Nations, normally referred to as the Commonwealth and formerly known as the British Commonwealth, is an intergovernmental organisation of fifty-four independent member states...
jurisdictions such as Australia
Australia
Australia , officially the Commonwealth of Australia, is a country in the Southern Hemisphere comprising the mainland of the Australian continent, the island of Tasmania, and numerous smaller islands in the Indian and Pacific Oceans. It is the world's sixth-largest country by total area...
, Hong Kong
Hong Kong
Hong Kong is one of two Special Administrative Regions of the People's Republic of China , the other being Macau. A city-state situated on China's south coast and enclosed by the Pearl River Delta and South China Sea, it is renowned for its expansive skyline and deep natural harbour...
and the United Kingdom
United Kingdom
The United Kingdom of Great Britain and Northern IrelandIn the United Kingdom and Dependencies, other languages have been officially recognised as legitimate autochthonous languages under the European Charter for Regional or Minority Languages...
, and the common law jurisdiction of the United States
United States
The United States of America is a federal constitutional republic comprising fifty states and a federal district...
(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" (e.g. invulnerable to cancellation for non-use, but not for becoming generic
Genericized trademark
A genericized trademark is a trademark or brand name that has become the colloquial or generic description for, or synonymous with, a general class of product or service, rather than as an indicator of source or affiliation as intended by the trademark's holder...
). In such cases the USPTO
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
checks and confirms 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 (e.g. 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 "genericGenericized trademark
A genericized trademark is a trademark or brand name that has become the colloquial or generic description for, or synonymous with, a general class of product or service, rather than as an indicator of source or affiliation as intended by the trademark's holder...
" 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
Bayer
Bayer AG is a chemical and pharmaceutical company founded in Barmen , Germany in 1863. It is headquartered in Leverkusen, North Rhine-Westphalia, Germany and well known for its original brand of aspirin.-History:...
company's trademark "Aspirin
Aspirin
Aspirin , also known as acetylsalicylic acid , is a salicylate drug, often used as an analgesic to relieve minor aches and pains, as an antipyretic to reduce fever, and as an anti-inflammatory medication. It was discovered by Arthur Eichengrun, a chemist with the German company Bayer...
" 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
Canada
Canada is a North American country consisting of ten provinces and three territories. Located in the northern part of the continent, it extends from the Atlantic Ocean in the east to the Pacific Ocean in the west, and northward into the Arctic Ocean...
). Xerox
Xerox
Xerox Corporation is an American multinational document management corporation that produced and sells a range of color and black-and-white printers, multifunction systems, photo copiers, digital production printing presses, and related consulting services and supplies...
for photocopiers and Band-Aid
Band-Aid
Band-Aid is a brand name for Johnson & Johnson's line of adhesive bandages and related products. It has also become a genericized trademark for any adhesive bandage in Australia, Brazil, Canada, India and the United States....
for adhesive bandages are both trademarks which are at risk of succumbing to death by becoming declared generic in certain countries, something that 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
Adjective
In grammar, an adjective is a 'describing' word; the main syntactic role of which is to qualify a noun or noun phrase, giving more information about the object signified....
, not as a noun
Noun
In linguistics, a noun is a member of a large, open lexical category whose members can occur as the main word in the subject of a clause, the object of a verb, or the object of a preposition .Lexical categories are defined in terms of how their members combine with other kinds of...
or a verb
Verb
A verb, from the Latin verbum meaning word, is a word that in syntax conveys an action , or a state of being . In the usual description of English, the basic form, with or without the particle to, is the infinitive...
, though for certain trademarks, use as nouns and, less commonly, verbs is common. For example, Adobe
Adobe Systems
Adobe Systems Incorporated is an American computer software company founded in 1982 and headquartered in San Jose, California, United States...
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
Frappuccino
Frappuccino is a trademarked line of blended coffee beverages sold by Starbucks. It consists of coffee blended with ice and various other ingredients, usually topped with whipped cream. Frappuccinos are also sold as bottled coffee beverages in stores and from vending machines.-History:Frappuccino...
" by Starbucks
Starbucks
Starbucks Corporation is an international coffee and coffeehouse chain based in Seattle, Washington. Starbucks is the largest coffeehouse company in the world, with 17,009 stores in 55 countries, including over 11,000 in the United States, over 1,000 in Canada, over 700 in the United Kingdom, and...
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.
See also
- Service markService markA service mark or servicemark is a trademark used in some countries, notably the United States, to identify a service rather than a product. When a service mark is federally registered, the standard registration symbol ® or "Reg U.S. Pat & TM Off" may be used...
s - Genericized trademarkGenericized trademarkA genericized trademark is a trademark or brand name that has become the colloquial or generic description for, or synonymous with, a general class of product or service, rather than as an indicator of source or affiliation as intended by the trademark's holder...
s - Trademark dilutionTrademark dilutionTrademark dilution is a trademark law concept giving the owner of a famous trademark standing to forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with,...
- Trade dressTrade dressTrade dress is a legal term of art that generally refers to characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers...
- Unregistered trademark
Other
- Ghost markGhost markGhost marks are trade marks which closely simulate ordinary words or phrases used in the course of trade, and which are not intended to be used as genuine trade marks.In the case of Imperial Group v...
s - Glossary of legal terms in technology
- Madrid systemMadrid systemFor the Madrid Protocol relating to mining in the Antarctic see Protocol on Environmental Protection to the Antarctic TreatyThe Madrid system for the international registration of marks, also conveniently known as the Madrid System, is the primary international system for facilitating the...
- Proper adjectiveProper adjectiveIn English usage, a proper adjective is an adjective that takes an initial capital letter. A common adjective is an adjective that is not a proper adjective...
- Trademark attorneyTrademark attorneyA trademark attorney is a person who is qualified to act in matters involving trademark law and practice and provide legal advice on trade mark and design matters....
- Canadian Trademark Law FAQ