Distinctiveness is one of the main criteria when deciding whether a trademark is eligible for registration. Some trademarks are considered distinct from the very start, and others tend to acquire this distinctiveness over time.
Trademarks are inherently distinctive if they are:
arbitrary (the name is not related to goods/services)
fanciful (the name is completely made up)
suggestive (the name suggests a feature of goods/services)
Every trademark has the tendency to associate the goods sold under it with a specific source.The longer the trademark is in use, this tendency becomes stronger, and a certain trademark is registered or psychologically associated with the product and its source in the minds of the consumers as distinctive. “Acquired distinctiveness” is also known as “secondary meaning,” implying that the trademark has gained a significance among the consuming public that is different from the dictionary meaning of the trademark.
Distinctiveness and registration success
The degree to which a trademark is distinctive for goods and services plays an important role in its likelihood of being registered. If a trademark is not inherently distinctive, then acquired distinctiveness must be demonstrated, which can be a lengthy process that may still end unsuccessfully. If the trademark is neither inherently distinctive nor has demonstrated the capacity to distinguish the goods or services of the application, the application will likely be rejected.
How to prove acquired distinctiveness?
In order to prove that a trademark has acquired distinctiveness, an applicant will need to submit some evidence, such as:
ownership of one or more prior registrations of the same trademark on the Principal Register
length of time of trademark use in the market
survey evidence, market research, consumer feedback studies
The satisfactory level of distinctiveness for registration on the Principal Register is a question of fact that will depend on the specific factors of each individual trademark. Trademarks that are highly descriptive will require greater evidence than those that are less descriptive.
The most well-known example of a descriptive mark is “Coca-Cola” for a cola drink made using ingredients from the coca plant. Taken on its own, this mark is descriptive. But the “Coca-Cola” mark became so closely associated with a particular brand of beverage that it acquired distinctiveness.
Apple is another good example of a trademark that acquired distinctiveness through use. While the word ‘apple’ has a primary meaning, it also has a secondary connotation that many people are familiar with. This acquired secondary meaning is exclusive to a certain computer brand, not to computers in general.