A trademark cannot be registered unless it is distinctive. Distinctiveness is determined by evaluating whether the trademark is: descriptive, generic, suggestive or arbitrary.
What Terms Are Not Eligible for Trademark Registration?
If a trademark is determined to be descriptive or generic than it is not distinctive and cannot be registered.
- Descriptive – A trademark is descriptive if it merely describes the product or service (e.g. the trademark "Adding Machine" for calculators is descriptive).
- Generic – A trademark that actually defines the product or service (e.g. The word "fork" is generic).
A descriptive trademark can sometimes be registered if it has acquired a secondary meaning. A trademark acquires a secondary meaning when the trademark has become generally recognized by the marketplace as corresponding to a product or service. Generic trademarks can never be registered.
What Terms Are Eligible for Trademark Registration?
Trademarks that are suggestive or arbitrary are distinctive and can be registered. However, if they become generic or descriptive, they may lose their status as distinctive:
- Suggestive – A trademark that conveys the nature of the product only through the exercise of imagination, thought, and perception (e.g. Jaguar and Mustang for fast cars).
- Arbitrary / Fanciful – A trademark that conveys nothing about the nature of the product except through knowledge of the market (e.g. Kodak).
Should I Consult a Lawyer about My Trademark Issue?
The deadlines and requirements for trademark registration are complicated and strict. An experienced trademark attorney can help you meet all the deadlines and fulfill all the requirements. A trademark lawyer can also participate in on-going research to make certain no one else is using or diluting your trademark without your permission. Distinctiveness is also a requirement for federal registration. This means that the mark must be able to identify the source of your goods.