Why is Being ‘Inherently Distinctive’ Important to a Trademark or Service Mark?

A Strong Trademark is a Bigger Piece of Intellectual Property.

An inherently distinctive trademark is a strong trademark. An inherently distinctive trademark may be registered on the USPTO Trademark Principal Register, qualifies for more protection under more federal, state and common law and is stronger for use in business to promote authenticity and for expanding product lines. The distinctiveness of a trademark may also help protect the mark from problems with conflicting marks and counterfeiting.

The stronger the trademark the greater protection received from the courts. Nike, Inc. v. Just Did It Enterprises, 6 F.3d at 1231 (C.A.7 (Ill.), 1993) quoting Squirtco v. Seven-Up Co., 628 F.2d at 1091 (8th Cir.1980). This factor [trademark strength] can also include the likelihood of expansion of the product lines. Nike, Inc. v. Just Did It Enterprises, 6 F.3d at 1231 (C.A.7 (Ill.), 1993) quoting Grey v. Campbell Soup Co., 650 F.Supp. at 1173 (C.D.Cal.1986). See StrongTrademark.com for more information.

The opposite of an inherently distinctive mark is a descriptive mark or a mark that does not function as a mark such as an ornamental mark. Descriptive marks are much harder to protect, they must first acquire secondary meaning or acquired distinctiveness:

"Descriptive" marks "merely describe a function, use, characteristic, size, or intended purpose of the product," such as YELLOW PAGES telephone directories and 5 MINUTE glue. And this class of marks includes those that are geographically descriptive, such as BOSTON beer produced by a Boston-based brewer, BANK OF AMERICA, and MISS U.S.A. No descriptive mark can serve as a valid trademark without evidence of secondary meaning. Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 629 (4th Cir.2003). "Secondary meaning" in connection with geographically descriptive marks means that the mark no longer causes the public to associate the goods with the geographical location, but to associate the goods with a particular product or source of the product. See Resorts of Pinehurst, Inc. v. Pinehurst Nat'l Corp., 148 F.3d 417, 421 (4th Cir.1998); Boston Beer Co. Ltd. P'ship v. Slesar Bros. Brewing Co., 9 F.3d 175, 181 (1st Cir.1993); see generally 2 McCarthy, supra, §§ 15:1-5. In this manner, KENTUCKY fried chicken and AMERICAN airlines are geographically descriptive marks that have established secondary meanings in consumers' minds, causing consumers to recognize a brand or source of fried chicken or air travel, rather than the places, Kentucky and America. OBX-Stock, Inc. v. Bicast, Inc., 558 F.3d 334, 339 (4th Cir.2009).

"Another test of descriptive-suggestive connotations is to determine the extent to which other sellers have used the mark on similar merchandise. That is, if others are in fact using the term to describe their products, an inference of descriptiveness can be drawn." Cutter Labs., Inc. v. Air Prods. & Chems., Inc., 189 U.S.P.Q. 108 (T.T.A.B. 1975); McCarthy § 11:69.

Descriptiveness is construed broadly. [See Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 217 USPQ 988 (5th Cir.1983)]. Indicia include: (1) the mark's dictionary definition corresponds with its meaning and context; (2) upon hearing the mark, one need not use "imagination, thought and perception to reach a conclusion as to the nature of goods;" (3) "competitors would be likely to need the terms used in the trademark in describing their products;" and (4) others have used the term in marketing a similar service or product.  Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 227 (5th Cir.2009).

Trademark refusal office actions are a big problem with merely descriptive trademarks that are not inherently distinctive. Overcoming the merely descriptive or descriptiveness refusals may require both effective arguments and evidence, sometimes a lot of evidence. Sometimes a trademark applicant’s mark is so highly descriptive that the prima facie case of distinctiveness which must be established by applicant requires better evidence or more evidence because the purchasing public will be less apt to view the term as a trademark. The “greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning.” See In re Bongrain International Corp., 894 F.2d 1316, 1317 n. 4, 13 USPQ2d 1727, 1728 n. 4 (Fed. Cir. 1990).

In the illustration below, acquired distinctiveness  (red arrow) can potentially move a trademark’s distinctiveness to the left but note that no amount of acquired distinctiveness can turn a generic mark into a distinctive mark.


To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these five steps:

1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions),

2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)

3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)

 4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimen refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs  which can slow down a registration. Incorrect IDs  may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)

*We don’t stop here but this is a good start!

Call us at 1-651-500-7590   for a Strong Trademark. A Strong Trademark is Not Just a tool to increase sales to customers–it is also easier to sell to your investors & licensees.

We can help you create and protect an inherently distinctive trademark.

© Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418, (651) 500-7590, WP@NJP.legal. This web site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us