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Trademark Distinctiveness: What You Must Know?

A strong trademark is a valuable asset that may help a business improve its reputation and influence customer behavior. When designing branding for a product or service, firms must consider not just the trademark's commercial appeal but also the amount of legal protection it will get based on a notion known as "trademark distinctiveness. This article discusses why trademark distinctiveness is essential when creating a brand identity and when a less distinctive trademark could make sense.

What is Distinctiveness in the Case of a Trademark?

The notion of trademark distinctiveness is important in trademark and service mark law. A trademark or service mark must "identify and differentiate" the relevant products or services to be eligible for federal trademark protection and registration.

Distinctiveness is a term that refers to a mark's capacity to "identify and differentiate" a product or service. If a proposed mark is not unique, it will be ineligible for federal trademark protection and the other advantages of registration. Additionally, a trademark or service mark's distinctiveness might affect its enforcement and continued validity after registration.

Significance of Trademark Distinctiveness

While there are several strictly legal advantages to choosing a trademark or service mark with a high degree of distinctiveness, businesses must consider any proposed mark's marketing and commercial consequences.

Consumer recognition for an arbitrary or fanciful brand may take years (and may need sizable marketing spend that is too expensive for start-ups and small firms). Until a unique mark gains broad recognition, it may be difficult for new consumers to relate the Mark to the products or services with which it is connected. Additionally, random and imaginative markings might provide difficulties for search engine optimization and social media marketing.


Classification of Trademarks According to their Distinctive Characteristics

Abercombie & Fitch Co. v. Huntington World Inc., ruled in 1976, established a spectrum of trademark distinctiveness, categorizing marks generally into five categories. Each of these classifications varies in its degree of distinctiveness. Based on a mark's degree of uniqueness, it is possible to determine whether or not it is registrable.

The five categories are as follows:

1. Generic Marks

These are the actual names of the items or services represented by these marks. Under no circumstances are they eligible for registration. For instance, the mark "Laptop" would be inadmissible for trademark registration since it is used to refer to an electronic device that is known to everyone.

To guarantee that a mark is protected and registered under Trademark Law, the applicant's greatest likelihood of success is if the Mark is fanciful or arbitrary. Additionally, these markings enable items and services to stand out in highly competitive industries and leave a lasting impact on customers. Thus, classifying trademarks along the range of trademark uniqueness is a valuable exercise for determining where the brand lies on the spectrum.

2. Suggestive Marks

Suggestive Marks are phrases that imply a certain quality, aspect, feature, function, ingredient, or other property of a product or service without explicitly stating it. In other words, the customer must rely on their imagination to deduce the nature of the products or services. While these marks are registrable, they are not regarded as powerful as fanciful or arbitrary marks due to the risk that they will not be sufficiently distinctive. For example, AIRBUS is used for flights, and NETFLIX is used for streaming services.

3. Descriptive Marks

These marks are not deemed suitable for registration because they indicate the goods or service's purpose, nature, or characteristic. Say, for example, if the term "DAIRY" is used for selling dairy products such as Milk, Curd, Butter etc., the Mark cannot be registered. However, in rare cases, a descriptive mark may be registrable. Provided that the Mark achieved distinctiveness in the eyes of consumers through long-term use. For example, Coca-cola, Burger King, American Airlines. 

4. Arbitrary Marks

Arbitrary Marks are well-known terms that are associated with unrelated products or services. The most well-known example of an arbitrary mark is the computer brand APPLE. The word "apple" has no meaning concerning computer products other than to function as a trademark. Arbitrary Marks may evoke favorable associations in the minds of customers. Additionally, this form of Mark is quite powerful and will get broad protection.

5. Fanciful Marks

Fanciful Marks are those that lack a dictionary definition. These are the strongest Marks since a customer will associate the Mark only as source identification. STARBUCKS, SPOTIFY, EXXON, and ROLEX, are all examples of fanciful trademarks. Additionally, an arbitrary Mark assists businesses in protecting their brands and avoiding trademark disputes. Additionally, since a trademark owner is required to police the marketplace for trademark infringement, regulating fanciful Marks is far easier than monitoring the marketplace for other sorts of trademarks. Additionally, you are less likely to uncover unlawful use of this sort of Mark since you invented the word and utilized your creativity to develop it.

Top Ways to Protect and Enforce Your Trademark in UAE

Why Choose Farahat & Co. for Strongest Trademark Registration?

Globally recognized businesses are increasingly focusing their efforts on developing more distinctive and innovative trademarks. These business titans have discovered that avoiding general and descriptive language helps to boost their brands. Of course, a strong brand built on descriptive phrases may be developed over time. Large resources will need to be spent on marketing, advertising, and promotion over time to establish secondary meaning in the consumer's mind. As a Trademark expert, we will advise you on the most efficient ways to strengthen your brand and the most cost-effective ways to differentiate your brand from your competitors.

Shahnaz Kaushar is a senior Trademark and Intellectual Property (IP) Expert. She has handled some of the firm’s complex, high-profile cases – many involving the protection of trademark and IP rights.