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Distinctive & Exclusive

Below we discuss two significant legal factors that make for a strong trademark: distinctiveness and exclusiveness.

1. DISTINCTIVENESS

A mark can be inherently distinctive or it may become distinctive through extensive and continuous use in the market. There are three types of inherently distinctive marks:

Fanciful marks are not actual words, but made-up terms, like ACCENTURE for consulting, EXXON for energy products, STARBUCKS for coffee, PINTEREST for social networking, and LEAFLY for cannabis news source and directory.

Arbitrary marks are real words, but words that have no literal or suggestive meaning connected to the product. Examples include LEAPFROG for educational games, APPLE for computer products, AXE for men’s toiletries, JACK IN THE BOX for fast food, DAWN for cleaning products, and VOLCANO for a vaporizer.

Suggestive marks allude to and indirectly, extrinsically relate to the product. Examples of suggestive marks are CHICKEN OF THE SEA for tuna, DREAM HOTEL for hotels, PEDIGREE for pet food, PRUDENTIAL for insurance services, GREEN BRANCH for banking services, COPPERTONE for sunblock, and SUBLIME for cannabis products.

If a mark falls into one of these three categories, it is inherently distinctive and you are off to a good start in developing a strong mark.

On the other hand, merely descriptive and geographically descriptive marks are weak marks (legally). Under trademark law, a mark is considered “merely descriptive” if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the relevant goods or services. Merely descriptive marks, e.g., Little Tavern for a restaurant, Bagel Bites for bite sized bagel snacks, which immediately communicate about even a single feature or attribute of a product are considered weak, and are intrinsically weak legally, making them challenging to register and difficult to enforce against similar marks.

That said, a mark that is otherwise not “inherently distinctive” may acquire distinctiveness upon a showing of “secondary meaning,” which can be based on evidence of 5+ years of continuous and exclusive use in commerce or relying on evidence upon a showing that the applicant has had extensive public facing distribution, marketing, advertising, promotion, and sales, etc. BHANG is an example of a mark that was initially considered merely descriptive and later considered to have acquired distinctiveness after 5+ years.

2. EXCLUSIVENESS

Even if you have created a distinctive mark, it must also be exclusive to be a strong mark. Exclusiveness refers to whether any third parties are using your mark (or a confusingly similar mark) for identical or related goods or services.

When assessing whether marks are “confusingly similar,” that the respective marks are considered in terms of sight (i.e., the visual impression created by the mark as a whole), sound (i.e., the similarities in pronunciation), and meaning (i.e., the closeness of the commonly understood meaning or dictionary definitions).

Moreover, is important to remember that exclusivity is viewed in the context of the relevant goods or services. For example, if you are a technology company and there are other companies using your mark for clothing, your mark may still be considered strong and exclusive because clothing is not related to technology. In contrast, otherwise seemingly different products may be considered related if the relevant goods/services are complementary, meaning they are used together or used by the same purchasers or advertised together or sold by the same manufacturer or dealer. For example, bread and cheese are considered related.

There is an important exception for “famous” marks. Simply put, famous trademarks are in a category of their own, because they are household names that are more likely to be associated with a specific brand and remembered in the consuming public’s mind. Therefore, famous marks can be enforced against confusingly similar marks even as to unrelated products.

Note that “use” is the criteria for assessing exclusivity, not registration. Trademark rights can be acquired simply by using a mark in commerce. Such use-based rights are called “common law” rights, and are awarded to the first party to use a mark in commerce, regardless of whether that party registers their mark with the relevant Secretary of State or with the United States Patent and Trademark Office (USPTO).  However, common law rights are limited to the specific geographic areas where the goods/services are offered, meaning, an owner does not automatically get rights in the entire state if they only use the mark in one city or county. That said, where particular goods are sold via e-commerce, the scope of common law rights may be broad or even national.

Ultimately, the goal is to select marks that are both distinctive and exclusive. Such marks are afforded a broad scope of protection and are highly valued assets.

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