Keep a quick reference to the spectrum of distinctiveness close when working with trademarks. The spectrum of distinctiveness is the starting point to determining what is protectable trademark subject matter to assessing the similarity between marks or trademark strength. Here are a few pointers for using the spectrum:
- Trademarks that are suggestive, arbitrary, or coined/fanciful starting creating trademark rights the second they are used in commerce. Trademarks that fall in the descriptive category must acquire distinctiveness because they can create trademark rights. The general rule is that descriptive marks acquire distinctiveness after five years of substantially exclusive use in commerce. Although, this five year period can be shortened with the right advertising campaign.
- Generic terms can never function as a trademark. The general saying is “once generic always generic.” The United States Court of Appeals for the Federal Circuit recently held that not only do generic terms exist for a genus of goods but also to a subgenus. In this case, the Court found that the relevant public understands the term ZERO to refer to a subgenus of soda.
- It is possible for a trademark to slide down the left side of the spectrum towards generic. However, trademark attorneys make more about genericide than they should. You would be hard pressed to come up with a recent example of a trademark that has succumb to genericide.
- Trademark markings are helpful, but not required. Nevertheless, it is always a good idea to put others on actual notice of your trademark rights.
- The further to the right your trademark lands on the spectrum of distinctiveness, the more conceptual strength the trademark has. When thinking of a starting point for a new brand, being on the right side of the spectrum has its advantages.
Naming firms may talk about the spectrum of distinctiveness using a slightly different vocabulary, but anyone working in naming or trademarks has the spectrum close to whatever project they are working on.