What is an Inherently Distinctive Trademark?

When you are creating the logo, slogan, design, or symbol that represents your brand, it’s essential to ensure it is inherently distinctive or can acquire distinctiveness. An inherently distinctive trademark is one that does not simply describe the goods or services associated with it. Rather, these types of marks are fanciful, arbitrary, or suggestive — making it easier to fight against infringement.

What is Inherent Distinctiveness?

An inherently distinctive trademark is one that quickly and clearly identifies your business as the source of the goods or services connected with it. These types of marks are considered strong and can be registered with the United States Patent and Trademark Office without any proof of acquired distinctiveness. Typically, an inherently distinctive mark falls into one of the following categories:

• Fanciful marks — Also referred to as coined marks, these types of marks consist of words, symbols, or terms that are developed solely for the purpose of functioning as a trademark. They may be a combination of letters that have no other meaning than being an invented word.
• Arbitrary marks — Similar to fanciful marks, arbitrary marks consist of a word or symbol that has nothing to do with the products or services associated with it. Examples of arbitrary marks include “APPLE” for computers or “TIDE” for laundry detergent.
• Suggestive marks — A suggestive mark has an association with the goods or services that is not readily apparent. Instead, these types of marks reference the product or service, leaving it up to the consumer’s imagination to connect the mark with it. Examples of suggestive marks include “NETFLIX” for movies or “COPPERTONE” for tanning lotion.

What Happens if Your Trademark is Not Inherently Distinctive?

Trademark applications are reviewed individually by USPTO examining attorneys. If they find that the mark is not distinctive or it is so similar to another mark that it would cause confusion among consumers, they may send you an office action. You can respond to the office action by arguing points that will support your position or submitting an amendment to the application. If the issue is not resolved, you may be sent a Final Office Action.

You can also file an appeal with the Trademark Trial and Appeal Board (TTAB) if the USPTO denies your registration based on lack of distinctiveness. In addition, relief might be sought by appealing the TTAB’s decision in the U.S. Court of appeals or by pursuing a civil action. If all efforts fail, a trademark applicant may be able to register their mark on the Supplemental Register on the grounds of acquired distinctiveness.

What’s the Difference Between Acquired Distinctiveness and Inherent Distinctiveness?

A trademark doesn’t always need to be inherently distinctive to be a strong mark. If a brand gains secondary meaning among consumers, a trademark will have acquired distinctiveness. In contrast with inherent distinctiveness, acquired distinctiveness occurs when a previously descriptive mark has achieved distinctiveness over time. This can be shown through prior registrations of the same mark on the USPTO’s Principal Register, five years of substantially exclusive and continuous use, or actual evidence such as an affidavit.

Can You Register a Mark That Lacks Distinctiveness?

If a trademark lacks inherent distinctiveness or acquired distinctiveness, there are still measures you can take to safeguard it from wrongdoers. Notably, the USPTO allows trademarks that are merely descriptive to be registered on the Supplemental Register. When a trademark is on the Supplemental Register, an owner has the right to use the encircled “R” symbol in connection with the mark and can file an infringement suit in federal court. Other benefits include being able to obtain trademark registrations in different countries and having the USPTO refuse subsequent applications that are confusingly similar to the registered mark.

But while the Supplemental Register provides a trademark owner with some protection, there are still significant benefits to registering on the Principal Register. This includes giving constructive notice to third parties that you own the mark, increased statutory damages in the event of an infringement action, the ability to claim “incontestable” status after five years of continuous use, and more. Importantly, a Supplemental Registration cannot be changed to a Principal Registration at a later time. A new registration would need to be filed after five years of continued use in order for a trademark to be on the Principal Register.

Contact an Experienced Trademark Attorney

The rules and regulations associated with USPTO trademark registration can be complex. It’s best to have a skillful trademark attorney on your side who can guide you through the registration process. Located in Ann Arbor, Michigan and assisting clients nationwide, the Trademark Lawyer Law Firm, PLLC helps business owners and entrepreneurs with a wide variety of trademark matters, including all aspects of the application and filing process. Contact us today to schedule a complimentary 15-minute consultation to learn how we can help.