Trademark Academy

Distinctiveness - the #1 trademark registrability criterion

For a trademark to be eligible for registration, it has to meet certain criteria, one of them being distinctiveness. As the purpose of a trademark is to signal a recognizable source of goods or services to the customer, only a distinctive-enough trademark can achieve this purpose without consumer confusion. 

Types of problematic trademark names

  • Descriptive trademarks: A descriptive trademark is a term with a dictionary meaning that directly describes some characteristic of the product or service. Descriptive marks are not registrable right away, but if the applicant can prove the brand name has acquired distinctiveness, it can be registered. Examples of such trademarks include Best Buy and American Apparel. The underlying reason stems from the market-wide recognition of these brands which consequently enabled a successful trademark registration as the brand clearly signals the recognizable source of goods to the customer. Please bear in mind that the mere inclusion of laudatory words (best, super, top, prime, etc.) or geographical terms is not sufficient to make a trademark distinctive. 

  • Generic terms: Terms with generic meaning, such as “shoes” for a shoe business, or “salt” for sodium chloride, can never acquire distinctiveness and are therefore unregistrable. Moreover, a brand name can become genericized if customers associate the name with a type of product/service rather than a particular brand, which is what happened to aspirin, yo-yo, cellophane and many others. When a brand becomes generic, it loses its right to trademark protection.

How do I know if my brand name is sufficiently distinctive? 

Submitting a trademark application without doing your homework might end up costing you your time and fees paid to the IPO. On average, 37% of all self filed applications fail and they are 2.5 times more likely to get rejected than applications filed by a trademark attorney.

It's therefore strongly recommended to get a legal opinion about the overall eligibility of your trademark before attempting to register it. In Trama, we offer a free lawyer's check with a 24-hour response guarantee that evaluates the distinctiveness of your trademark and other criteria necessary for a successful registration.

Frequently asked questions