When crafting your marketing strategy, it might seem logical to choose marks that directly describe your company’s products to potential customers. After all, a brand that clearly informs consumers about what you offer sounds like a great idea. However, opting for a descriptive mark can be a very risky move.
Yet each of your marks must serve a crucial function: it must be distinctive, meaning that it must indicate that the products that carry it come from one and only one source. From a legal standpoint, a mark that merely describes an ingredient, quality, function, purpose, feature, characteristic, or use of the associated products is not inherently distinctive, as any similar product reasonably must also be allowed to convey the same information to fairly compete in the marketplace. Such non-distinctive marks do not enjoy the same (or sometimes any) level of protection as distinctive marks, which include:
- Suggestive Marks: These hint at the product but do not clearly describe it.
- Arbitrary Marks: These convey nothing remotely descriptive of the product.
- Fanciful Marks: These are completely made-up and meaningless terms.
For robust U.S. federal trademark rights, you should register your mark on the “Principal Register” of the United States Patent and Trademark Office (USPTO). However, securing federal registration for a descriptive mark (e.g., “Puppy Chow” for dog food, “Mel’s Diner” for restaurant services) is challenging, typically requiring proof that the mark has “acquired” distinctiveness through continuous and exclusive use for five or more years. Essentially, inherently distinctive marks make the registration process quicker and easier. Descriptive marks, on the other hand, need to work harder and longer to acquire the required distinctiveness.
Importantly, if a competitor starts using your descriptive mark before it qualifies for registration, that competitor can hinder your ability to register the mark. Moreover, even if your company successfully achieves registration of a descriptive mark on the Principal Register, your company typically will find that descriptive mark to be tougher (and more expensive) to police, enforce, and litigate. Additionally, maintaining distinctiveness in the market often requires larger advertising budgets for descriptive marks.
When selecting a mark, remember its primary purpose as a source indicator. Resist the temptation to use it to describe your product(s). Instead, choose inherently distinctive marks that are suggestive, arbitrary, or fanciful. These distinctive marks can be excellent choices when used properly and can be outstanding candidates for federal registration.In conclusion, while it might be tempting to select a mark that describes your product, the smarter choice is to opt for one that is inherently distinctive. This strategic decision can provide stronger legal protection, easier registration, and more effective market presence for your brand.