Distinctiveness - United States Trademark Law Overview

Distinctiveness Requirement

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Distinctiveness: - The ability of a mark to distinguish in commerce the goods and services of one party form those of another

Requiring a trademark or service mark to be distinctive in order to receive legal protection serves two related purposes:
1. Insuring that the mark identifies a single source.
2. Insuring that all competitors are free to use non-distinctive terms to describe their respective goods and services.

Continuum of Distinctiveness

Distinctive->Suggestive->Descriptive->Generic

The categories in which trademarks are placed in determining their level of distinctiveness are defined below:

Among these, the categories "Generic Marks" and "Descriptive Marks" are the ones addressed by the "distinctiveness" prohibition in §1052(e)(1) of the Trademark Act.

Generic Marks - Marks which are the common name of goods and/or services or a category of goods and/or services

Generic marks may never be protected.
- This statement is subject to the "Primary Significance Test". Under it, a generic mark can be protected if its primary significance in the minds of the consuming public has become a single specific source of goods and/or services, rather than the goods and/or services themselves.

Descriptive Marks - Marks which describe in plain and ordinary use of the language the features, qualities, ingredients, or uses of products and/or services.

Descriptive marks may not be protected unless they have acquired secondary meaning.
The extent to which secondary meaning has been acquired will determine how "strong" or "weak" the mark is.

Suggestive Marks - Suggestive marks evoke features of products and/or services in a way that requires the use of the consumer's imagination, thought or perception and that does not merely describe them.

Suggestive marks are considered inherently distinctive and, thus, are protectible without any further showing.

Arbitrary Marks - Marks which use commonly known words or terms in an unusual or unfamiliar way which is not typically considered related to the goods and/or services.

Arbitrary marks are considered inherently distinctive and, thus, are protectible without any further showing.

Fanciful Marks - Marks which are words or terms created solely for use as trademarks.

Fanciful marks are considered inherently distinctive and, thus, are protectible without any further showing.

Fanciful marks can, however, become generic if they become the common name for the goods and/or services in relation to which they are used.

Distinctiveness threshold:

Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137 (2d Cir. 1997)

The plaintiff, Genesee Brewing Company, sold a well-known lager beer called "JW Dundee's Honey Brown Lager".
- The defendant, Stroh Brewing Company, in an attempt to compete, introduced into the market an ale by the name of "Red River Valley Honey Brown Ale".
The plaintiff's application for registration of the trademark "JW Dundee's Honey Brown Lager" had been approved for publication.
- The defendant had initiated opposition proceedings which were stayed pending the outcome of the subject action. The plaintiff sought to restrain the defendant's use of "Honey Brown" under the "false designation of origin" provisions of §1125(a).
  - The findings in the instant litigation were to be determinative in the defendant's opposition proceedings in assessing distinctiveness issues and whether the plaintiff had a registrable mark.
The appeals court saw as important the distinction between "ales" and "lagers", finding that these were the two primary classifications of beer.
- This reversed a district court finding that there was a generic category called "brown beer", for which "honey" was descriptive.
The appeals court followed the rule that a mark which is descriptive, suggestive, arbitrary, or fanciful when applied to some goods and/or services may be generic when applied to others, particularly where the use of the mark is required to convey the nature of those goods and/or services to consumers.
- It found that there was a recognized category of beers called "brown ales" to which the defendant's beer belonged.
  - Inside that category it found to exist a subcategory, called "brown ales brewed with honey", to which the defendant's beer also belonged.
    - Because the use of the word "honey" was necessary to indicate a brown ale in this subcategory, defendant was entitled to generic use of "Honey Brown Ale".
The court refrained from ruling on whether "Honey Brown" was generic in relation to lagers.
- It suggested that the term might be descriptive, so long as there were other words available to refer to lagers which are brown in color and flavored with honey.
  - The opinion noted that if a product differs in a certain respect from an established product class enough to be considered its own genus and its seller uses a term commonly descriptive of that difference as or in the name for the product, the product name will be generic. This is assuming that there are no other commonly available terms which effectively communicate the same functional information.

Capacity to be distinctive:

In Re Owens-Corning Fiberglass Corp., 774 F.2d 1116 (Fed. Cir. 1985)

§1127 of the Trademark Act defines the term "trademark" as follows:

The term "trademark" includes any word, name, symbol, or device, or any combination thereof -

used by a person, or
which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Owens-Corning sought registration of the color "pink" for use in relation to fiberglass insulation.

The manufacture of pink insulation was the result of an arbitrary non-utilitarian selection of color in the design of a product.

Owens-Corning wanted to register the color "pink" because it felt that "pink" had become associated strongly with its product. That is, it has acquired secondary meaning in relation to fiberglass insulation and, thus, had become distinctive.

Marks which used color as a component had been registrable under the preceding Trademark Act, colors themselves had not.

The spectrum of available colors was thought to be too finite to permit any single color's registration.

The court allowed trademark registration of the color pink.

It rejected the color depreciation theory, stating that protection of a particular color for use in relation to fiber-glass insulation did not confer a monopoly on the use of that color or act as a barrier to entry into the market. The court also observed that the color in the context of its use here had no utilitarian purpose or function.
In the court's opinion, consumer evidence showing that "pink" was connected with Owens-Corning's product in the minds of "a significant part of the purchasing public" and $42,000,000 in relevant advertising expenditures demonstrated a level of distinctiveness sufficient to merit reversal of the Trademark Trial and Appeals Board's decision denying registration.

Other marks, seemingly, had obtained registration with much lesser showings of distinctiveness.

"John Deere Green" was, however, denied registration in an earlier case because it was found to be "aesthetically functional".
In Qualitex Co. v. Jacobson Products Co., Inc.,514 U.S. 159 (1995), the Supreme Court followed the rule of Owens and allowed Qualitex to protect the color green-gold.

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