A trademark is one your most valuable business assets that you absolutely need to protect, but you can only get full legal protection it if it’s distinctive, not descriptive.
Descriptive vs. Distinctive: An Inverse Relationship
A trademark is distinctive if the meaning of the words used in the mark do not describe the products or services represented by the mark.
There is an inverse relationship between “distinctiveness” and “descriptiveness.” The less descriptive the mark, the more distinctive the mark and the more protection it has.
Think of it this way, if the meaning of the words used in a brand name describe a feature, quality, ingredient, subject matter, location, and the like of the products or services being offered, then trademarking those words would deprive other people and businesses from using those same words to describe their own products and services. Imagine if a company in the technology sector was allowed to trademark the words “computer” or “software,” then no one else would be allowed to use either of those words to refer to their own products. That would simply be unfair.
The Spectrum of Trademark Distinctiveness
The more distinctive the mark, the stronger the legal protection. We measure distinctiveness along a continuum referred to as the Spectrum of Trademark Distinctiveness. Check out our infographic below depicting the spectrum as a “fence.”
HOW TO STAY ON THE DISTINCTIVENESS SIDE OF THE FENCE
When you think about your brand name, imagine it as being on one side of the trademark distinctiveness fence or the other.
On the distinctive and highly protectable side are coined or fanciful marks, arbitrary marks, and suggestive marks. These types of marks enjoy the strongest levels of protection under the law.
On the less distinctive side of the fence are descriptive marks and generic terms. Descriptive marks have much weaker legal protection and generic terms have no protection at all.
CAN I REGISTER A DESCRIPTIVE TRADEMARK?
Yes, you can, but there are some caveats.
Descriptive marks can be registered, but they can only be registered on the Supplemental (or secondary) Register at the U.S. Patent and Trademark Office. Distinctive marks, on the other hand, can be registered on the Principal (or primary) Register.
WHAT EXACTLY IS THE SUPPLEMENTAL REGISTER?
Think of the Supplemental Register as a holding room for descriptive marks that are capable of serving as distinctive trademarks, but aren’t distinctiveness enough for full legal protection. As indicated above, a mark is considered to be distinctive if it does NOT describe a feature, quality, ingredient, location, subject matter, and the like of the goods/services it covers, such as KODAK (KODAK has no meaning other than its brand name meaning) or APPLE (APPLE has no meaning when used as a brand name for computers).
Here’s the good news!
Descriptive marks can become distinctive over time and ultimately enjoy a broad scope of legal protection and sit on the Principal Register. A descriptive mark that becomes distinctive has acquired what we call “secondary meaning” in the marketplace. Essentially, customers come to understand that the mark has two meanings: (1) the primary descriptive meaning, and (2) the secondary trademark meaning.
A well-known example is BEST BUY for a consumer electronics store. The term BEST BUY has a primary meaning of “the best value” or “a great bargain,” but it also has a second meaning in the marketplace as a brand name for a retail store. Over time, the mark “acquired distinctiveness” and moved over to the distinctive side of the fence. It also became eligible for registration on the Principal Register, which does have more benefits than the Supplemental Register.
Fear not! A Supplemental Registration is much better than no registration!
Don’t be disheartened if your mark ends up on the Supplemental Register. It still offers very important protection and rights for your brand as you can still get many years of federal trademark registration benefits while you grow your business and enable your trademark to gain distinctiveness in the marketplace. Once your mark has acquired distinctiveness (most of the time, you can prove this through at least five years of consistent and continuous use of the mark), you can file paperwork to register it on the Principal Register where you get the strongest level of trademark protection.
It is always best to work with a trademark professional so you come up with a strategy that will give you the greatest amount of protection for your brand now and in the future. That includes filing your application in such a way that your mark has the best possible chance of getting the broadest scope of legal protection. This is particularly important if your mark is descriptive in any way!