When Is a Trademark Distinctive?

David Malick
cutout paper appliques of sick and healthy human figures

The word “distinctive” has special meaning in the world of trademarks. A brand must be “distinctive” to perform as a trademark before the United States Patent and Trademark Office (“USPTO”). A word mark can be considered distinctive if it is the kind of mark that has “inherent distinctiveness” or has acquired distinctiveness through secondary meaning. Said differently, a fanciful mark, or an arbitrary mark, or a suggestive mark, is considered to have inherent distinctiveness, but a descriptive mark must acquire an additional meaning (distinctiveness) through its commercial use.

A fanciful mark is a word created to function as a trademark that has no other meaning than as a brand to indicate the source of the goods or services provided under the mark. An example of a fanciful mark is XEROX used for document management technology such as printers and photocopiers. Other well-known examples or fanciful marks include: CLOROX, CUTEX, EXXON, HOBBIT, KODAK, POLAROID, VIAGRA, and GOOGLE.

An arbitrary mark is a word that is commonly used, but which is arbitrarily applied to goods or services in a way that does not suggest some aspect of the goods and services. An example of a fanciful mark is APPLE when used for records or electronics. Other examples of arbitrary marks are AMAZON for online sales, INDIAN for a motorcycle, NOVA for a television series, SUN for computer hardware and software, VICTORIA’S SECRET for women’s lingerie, CAMEL for cigarettes, SHELL for gasoline, ARM & HAMMER for baking soda, SATURN for automobiles, and YAHOO for a web search engine

A suggestive mark is a word that suggests, but does not describe, some aspect of the goods or services. An example of a suggestive mark is COPPERTONE for suntan lotion. Other suggestive marks include: AT A GLANCE for calendars; CHICKEN OF THE SEA for tuna fish; CITIBANK for an urban bank; CLASSIC COLA for a soft drink; FLORIDA TAN for suntan lotion; GORILLA for children’s playground equipment; HULA HOOPS for plastic hoops; PLAYBOY for a magazine; Q-TIPS for wooden strips with cotton on end; 7-ELEVEN for a food store; and WET ONES for pre-moistened wet wipes.

Fanciful marks, arbitrary marks, and suggestive marks are all considered to be inherently distinctive and legally qualify to be used as trademarks—words that point to the source of origin of specific goods and services. However, a descriptive mark is not inherently distinctive.

A descriptive mark is a word that is commonly used to describe a characteristic of goods or services—their purpose, size, ingredient, or nature—to a reasonably informed potential customer. Some examples of marks held to be descriptive are: AMERICA’S BEST POPCORN! for popcorn; BEER NUTS for salted nuts; BREAK AND BAKE for frozen cookie dough; COMPUTER LAND for retail computer stores; DYNASHINE for shoe polish; HONEY ROAST for roasted nuts; PIZZAZZ for pizza; RAISIN-BRAN for raisin and bran cereal; and TENDER VITTLES for cat food. “American airline” could be used to describe several airlines based out of the United States of America. However, if an airline can show that the use of the mark causes customers to think of only one airline, it has acquired distinctiveness through secondary meaning and can be a legal trademark for that airline, as is the case for AMERICAN AIRLINES. Another example of a descriptive mark that acquired secondary meaning is NU-ENAMEL for enamel paint.

Courts have had difficulty distinguishing between whether a word mark is suggestive or descriptive. The dividing line is often blurry, and the difference can be a determination that a word must acquire secondary meaning to function as a trademark. One test that is often employed by courts to distinguish a suggestive mark from a descriptive mark is called the imagination test: the more imagination that is required by a customer to arrive at a description of the goods and/or services being represented by the mark, the more likely it is that the word mark is suggestive and not descriptive. Another test employed is whether competitors will need to use the word mark to describe their goods and services when advertising. The more imagination the mark requires, the less customers will need to use the mark to describes their goods and services.

An insightful example of how the same word might function as different kinds of marks is given in McCarthy on Trademarks: “The proper categorization will vary with the relationship between the term and the product or service. For example, in the author’s opinion, the word “apple” would be arbitrary when used on personal computers, suggestive when used in “Apple-A-Day” on vitamin tablets, descriptive when used in “Tomapple” for combination tomato-apple juice and generic when used on applies.” Section 11:71, quoting Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 24 U.S.P.Q.2d 1161, 1166 (2d Cir. 1992).

When creating a trademark for your goods and services, it is advisable to create marks that are inherently distinctive, and the higher up the ladder the mark is as a fanciful or arbitrary mark, the stronger the mark will be. However, if you want to use a suggestive mark, you might consider the imagination test to distinguish it from a descriptive mark.

If you would like to discuss trademarks in more depth, please feel free to contact me at RichardsonClement PC: