Requirements of Distinctiveness

A mark qualifies for protection and can be registered if it is distinctive, which means the mark is unique and can be distinguished from other marks that identify goods and services because of its uniqueness. The more inherently distinctive, the more likely the mark can be protected. There are four categories of distinctiveness. The requirements of distinctiveness range from very distinctive and unique to not at all. Let’s take a look in descending order of importance.

Coined or fanciful marks are most likely to be protected. The terms are made up, or coined terms, and have no prior meaning either in the English language or in any other language. Examples are Exxon for petroleum products, Kodak for photographic products, and Esteemable Acts for self-esteem products and services.

Arbitrary is the next best type of mark, because it is unrelated to the product or service it’s attached to, such as Dominos Pizza and Apple Computers. There is a greater likelihood this type of mark will be protected, because it’s rare that someone else will use the mark in the same way because it was arbitrarily chosen.

A suggestive mark doesn’t describe the content of the product or service. It merely hints at the nature of the product, such as Coppertone Suntan Lotion, Huggies Diapers, or Ever-Ready Batteries. For that reason, suggestive marks are often protected.

Finally, a descriptive mark is least protectable, because it fully describes the product or service. The only way a descriptive mark can be protected by trademark is if it has acquired a secondary meaning, where the public is likely to see it as more than just a description of the product or service offered.

How to choose a mark

After you’ve taken into account the requirements of distinctiveness, consider looking through the dictionary or thesaurus for words that you like, or just to get an idea of how creatively words can be put together. When I chose Esteemable Acts as a mark for my self-esteem products and services, I broke with tradition regarding spelling and pronunciation. The correct word for an act perceived as admirable or worthy is estimable, and pronounced like the word estimate. Instead, I played on the word esteem, thus esteemable. As a result, it’s a protected and registered mark. If you prefer, you can hire a consultant to help you coin an original word and phrase. You’ll find a list in the Resources section.

Confusing Similarity to Another Mark

Next let’s look at the requirement that the mark you choose not be confusingly similar to marks already in existence. Here, you must pay close attention to the similarity between the marks themselves and the similarity between the goods and services that the marks represent. For example, suppose a hypothetical company called BITO sells cars and has a registered trademark. Then VITO, another hypothetical company, comes along and wants to sells cars as well in the same community. It’s likely a dispute will arise because VITO sounds confusingly similar to BITO, and they sell the same product. However, it’s less likely that there will be a dispute if VITO came along and sold hair care products.