The Spectrum of Trademark Distinctiveness

SPECTRUM TRADEMARK DISTINCTIVENESS the of WHAT IS A TRADEMARK? A word, design, or a combination that identifies a company's products & services It can be protected under intellectual property laws, preventing others from using and making money off of it It doesn't have any value until it is used in commerce It differentiates the products & services of one company from another's A recognizable symbol of a company's reputation, promise & consumer loyalty It can have tremendous social value commercial, financial, A trademark is a valuable business asset that you need to protect, but you can only protect it if it's distinctive. When is a Trademark Distinctive? A distinctive trademark does not use words that directly and obviously describe the actual products or services. DISTINCTIVE Less obviously descriptive words = More strength and protection NOT DISTINCTIVE More obviously descriptive words = Less strength and protection Generic words and phrases can never be protected as trademarks. Distinctive logos have no dictionary meaning or significance except as a trademark. A made-up word can be a fanciful trademark. COFFE ESocialNETWORK Is your trademark's enforceability on the fence? Find out how strong it really is: Not all trademarks are created equal! STRONGEST PROTECTION H WEAK to NO PROTECTION TYPE STRENGTH & DESCRIPTION EXAMPLES COINED OR FANCIFUL MARKS STRONGEST Have no dictionary meaning or significance in any way except as a trademark. A made-up word can be a fanciful trademark. CLOROX EXXON GOOGLE KODAK STARBUCKS The highest level of protection & enforceability. STRONGER Use an existing word to represent a company's products & services which are completely unrelated to the normal meaning of the word. ARBITRARY MARKS APPLE AMAZON SHELL. BABE RUTH IVORY Very strong and typically have a high level of protection & enforceability. SUGGESTIVE MARKS Not as strong as coined or arbitrary marks, but still possible to protect & enforce. STRONG Require thought or imagination to figure out what kind of products & services the words represent. Often considered clever marks. CHICKEN OF THE SEA. GREYHOUND MICROSOFT THE NORTH FACE WRANGLER WEAK Descriptive marks convey an idea of an ingredient, quality level, purpose, or geographic location of the company's product DESCRIPTIVE MARKS Can only be protected if you show that the mark has acquired distinctiveness & prove that the mark has a second meaning as a BANK OF AMERICA BEST BUY CREME DE MENTHE HEALTHY CHOICE MOTT'S brand name to consumers. Last names are treated as descriptive marks. GENERIC TERMS Generic terms can never be protected as trademarks. Sometimes a protected trademark can turn into a generic term, which means it can no longer be protected. Aspirin, linoleum, and escalator are examples of formerly protected trademarks that are now generic terms. NONE Marks that are the common, known name for a product or service BICYCLE CEREAL COMPUTER EMAIL TABLE PICKING & PROTECTING A STRONG MARK Get the Right Help Work with an intellectual property attorney who can help you choose a distinctive mark that is legally protectable, correctly register it, and enforce it. Do It Right the First Time Beware of do-it-yourself document and trademark filing services and websites. Many of these providers do not offer legal advice or legal services from attorneys. If you encounter problems down the road, most of them won't be able to help you and will refer you to an attorney anyway. You will save time, money, and stress by getting the right help the first time. Kelley Keller © Kelley Keller Inc. I www.KelleyKeller.com The Business Professional's Source for Intellectual Property and Social Media Law Education This infographic is lor informational purposes only and cannot be relied on as legal advice. COINED OR FANCIFUL MARKS / STRONGEST ARBITRARY MARKS / STRONGER | SUGGESTIVE MARKS / STRONG DESCRIPTIVE MARKS/ WEAK GENERIC TERMS / NONE