How to Be Considered Distinctive in Trademark Law
The word distinctive comes from the Latin dis-“apart” and means “to set apart.” People who are considered to be very distinctive are often known for doing things that others don’t do, such as going to new heights or taking their job in a different direction. A brand name or logo can be considered distinctive if it is easily identifiable and unique among its competitors.
A trademark must be distinctive in order to receive protection from other trademarks. This is the basic principle that governs trademark applications, but how a mark is judged as distinctive is actually quite complicated. The most important factor in this process is how unique the mark is, relative to the type of goods or services offered by the company that owns the trademark.
For example, a very unique mark will be considered distinctive for shoes, but not for mugs or bookcases. Generally, the more distinctive a trademark is, the more likely it is to be registered.
Despite the fact that trade mark law defines distinctiveness in many different ways, it is generally understood to mean that a trademark must be capable of distinguishing the goods and/or services ('products') of one "undertaking" or legal trading entity from those of other entities. This is a fundamental requirement that must be met in order for a mark to be considered registrable.
Distinctiveness is also required in order for a mark to be considered "fanciful." Fanciful marks are those that create a new meaning in the mind of consumers, rather than simply restating existing descriptive terms. For this reason, fanciful marks are more likely to be registrable than non-fanciful marks.
However, it should be noted that even a fanciful mark may be found to be non-distinctive if it is merely a mere allusive or suggestive (eg, NOW) and does not communicate a separate function in the trade (like describing the characteristics of the goods). Likewise, a combination of words can be considered to be descriptive (eg, BIOMILD) if the overall effect of the sign in use in commerce is to describe the nature of the products or services being sold (even if there are other, non-descriptive meanings associated with the word combinations).
Trademark examiners consider a variety of factors when assessing whether or not a trademark will meet the definition of distinctive. In addition to showing a history of exclusive and continuous use, brand owners can offer evidence such as advertising expenses or media coverage to support acquired trademark distinctiveness. Declarations from consumers or industry experts may also be taken into consideration. Ultimately, the best way to determine whether or not a trademark will be deemed distinctive is to speak with an experienced lawyer about your specific business. Getting your trademark to be distinctive is key to attracting business and protecting your company’s investment.