What does it mean for a trademark to be distinctive?
One of the primary requirements for a trademark to be protectable is that it must be distinctive. Some trademarks meet this requirement by being “inherently distinctive.” Inherently distinctive marks tend to be more creative, avoiding any actual description of the related goods or services, like the GOOGLE mark, which bares no relation to the actual services offered by Google (although it’s now got generic issues to contend with). Other marks must acquire the necessary distinctiveness through what is known as “secondary meaning.”
Marks are generally classified in one of four categories relating to this issue of distinctiveness, from most distinctive to least distinctive:
1. Arbitrary and fanciful marks - arbitrary marks are marks which have absolutely no connection to the goods or services they are used in connection with. For example, if you used the term NUTTY in connection with the sale of computers, it would be an arbitrary mark. Fanciful marks are marks made up of invented terms.
2. Suggestive marks - these are marks which suggest some quality or aspect of the goods or services, but are not actually descriptive of that quality or aspect. This is a subtle distinction, which really focuses on how much imagination a consumer would need to connect the suggestive nature of the term with the related quality or aspect of the goods or services. For example, if you used the term NUTTY in connection with the sale of a skin oil made with processed peanut oil, it could considered be a suggestive mark.
3. Descriptive marks - these are marks which directly relate to and describe some aspect of the goods or services. For example, if you used the term NUTTY in connection with the sale of peanut butter, it would be a descriptive mark. Descriptive marks cannot be federally registered or protected unless it can be shown that they have acquired the necessary distinctiveness through “secondary meaning.”
4. Generic marks - these are marks which are common terms used with a good or service and cannot serve the trademark function of distinguishing goods or services. For example, if you used the term NUTTY in connection with the sale of peanuts, it would be a generic mark. Generic marks are not entitled to any trademark protection, because they serve no source-indicating function.