Trademark Information

Trademark Distinctiveness

​

​​Distinctiveness is one of the requirements for obtaining a US trademark registration.

 

Inherently distinctive marks (eligible for the Principal Register):

​

• Fanciful – invented marks

  • Example: KODAK

• Arbitrary – real marks that are unrelated to the goods/services associated with the mark

  • Example:  APPLE for computers

• Suggestive – marks that hints or suggests a characteristic or quality of the goods/services without directly describing it 

  • Example:  COPPERTONE for sunscreen)

​​

Not inherently distinctive marks:

​​

• Merely descriptive – describe characteristic or quality of the goods/services

  • Example:  CREAMY for ice cream

  • Eligible for Supplemental Register only (not Principal Register)

• Generic – a highly descriptive term that is widely used to refer to a class of goods or services

  • Example:  MILK for dairy

  • Cannot be registered as a trademark

  • A trademark can become generic if the it becomes widely used by the public as a common name for a good or service

    • Examples:  "Escalator" (originally a trademark of the Otis Elevantor Company); "Aspirin" (originally a trademark of Bayer) 

• Acquired Distinctiveness (a/k/a “Secondary Meaning).  Mark is merely descriptive, but has come to be recognized by the public as identifying the applicant’s goods/services through use and/or promotion of the mark – eligible for Principal Register

​

Principal Register

​

• Eligibility: Inherently distinctive marks and merely descriptive marks that have acquired distinctiveness

• Key Benefits:

  • Legal presumption of validity, ownership, and exclusive rights

  • Constructive nationwide notice of ownership

  • Eligibility for intent-to-use applications

  • Potential for incontestable status after 5 years

  • Blocks confusingly similar marks from being registered on either register

  • Use of the ® symbol

  • Right to sue in federal court

 

Supplemental Register

​

• Eligibility: Merely descriptive marks

• Key Benefits:

  • Use of the ® symbol

  • Can block similar marks from registration

  • Registration can be cited in opposition or cancellation proceedings

  • May support a future claim of acquired distinctiveness

• Limitations:

  • No legal presumption of validity or exclusive rights

  • Not eligible for intent-to-use applications

  • Does not lead to incontestable status

• Option to Move to the Principal Register:

  • Must show acquired distinctiveness (see below)

​​

Establishing Acquired Distinctiveness

 

In order to be registered on the Principal Register, a trademark applicant must prove that a merely descriptive mark has come to be recognized by the public as identifying the applicant’s goods or services. The more descriptive a mark is, the stronger and more specific the evidence must be to prove acquired distinctiveness. Such proof can comprise the following:

​

• Five Years of Exclusive and Continuous -- A sworn declaration of at least 5 years of substantially exclusive use in commerce may be accepted as prima facie evidence.  Most likely to be successful for marks that are only mildly descriptive.

• Additional Evidence (often required for highly descriptive marks):

  • Sales and revenue figures

  • Advertising expenditures

  • Length and geographic scope of use

  • Consumer surveys showing public recognition

  • Media coverage or third-party endorsements

  • Customer declarations or affidavits