Legal Terms in Real Life: Distinctiveness

This series explains legal terms in plain language and gives examples from everyday life.

Today’s Legal Word of the Day is “distinctiveness,” from trademark law. Black’s Law Dictionary (8th Ed.) defines “distinctiveness” as: “The quality of a trademarked word, symbol, or device that identifies the goods of a particular merchant and distinguishes them from the goods of others.”

The United States Patent and Trademark Office (PTO) defines distinctiveness in relation to descriptiveness; a mark may be placed on the continuum between distinctive and descriptive as follows:

Distinctive ————————————————————————–> Descriptive Generic
Fanciful (invented for the sole purpose of being a mark) Arbitrary (real words that do not suggest or describe the goods or services) Suggestive (real words that require imagination to reach the goods or services) Merely descriptive (describes something about the goods or services) Generic (common or class name for the goods or services)

 

The real concern in trademark law, what makes a trademark a “strong” or “weak” mark, is whether or not the mark can distinguish the goods or services of a particular company from the goods or services of another company. This is why the PTO rates marks as distinctive or not. If the mark is describing a characteristic of the goods, it isn’t serving as a strong mark and may not deserve protection—more to the point, its owner may be trying to take words needed to describe the goods away from competitors. Here are some everyday examples:

Distinctive ————————————————————————–> Descriptive Generic
Fanciful: XEROX, GOOGLE,

KODAK

Arbitrary: APPLE (with electronics),

CARIBOU (with coffee)

Suggestive: ROLLER BLADES (with in-line skates),

COPPERTONE (with sunscreen),

UNCLE HUGO’S (with a book store specializing in science fiction)

Merely descriptive: FOR THE CURE (with charitable services for curing an illness),

TRAVELERS (with auto insurance)

Generic: USED BOOKS (for a used book store)

 

In short: distinctiveness refers to the quality of a trademark (or service mark) being unrelated to the goods (or services) it is used to identify.

Have a word or term you would like to see defined in this series? Contact me and let me know!

Kelcey is a business attorney practicing internet law for clients in Iowa and Minnesota. If you have any questions about this post, please feel free to reach out to her via the Contact section of the site.

2 thoughts on “Legal Terms in Real Life: Distinctiveness

  1. F*ckin’ amazing things here. I’m very glad to see your post. Thanks a lot and i am looking forward to contact you. Will you please drop me a mail?

  2. Thank you! It is my firm’s policy not to contact people directly via the blog, but you should feel free to send me an email.

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