Editing Distinctiveness

== Overview ==

'''Distinctiveness''' is an important concept in the law governing [[trademark]]s and [[service mark]]s. “Marks fall into five categories of distinctiveness: generic, descriptive, suggestive, fanciful, and arbitrary.”<ref>Philbrick v. eNom, Inc., 593 F.Supp.2d 352, 367 (D.N.H. 2009)([http://scholar.google.com/scholar_case?case=10552773465883049840&q=%22593+F.Supp.2d+352&hl=en&as_sdt=2002 full-text]).</ref>

A [[trademark]] may be eligible for [[Trademark registration|registration]], or registrable, if amongst other things it performs the essential [[trademark]] function, and has distinctive character. Registrability can be understood as a continuum, with "[[inherently distinctive]]" marks at one end, "[[generic mark|generic]]" and "[[descriptive mark|descriptive]]" marks with no distinctive character at the other end, and "[[Suggestive mark|suggestive]]" and "[[Arbitrary mark|arbitrary]]" marks lying between these two points.

== Assessing distinctiveness ==

In [[trademark]] litigation, courts are most frequently asked to parse between "[[Suggestive mark|suggestive]]" and "[[Descriptive mark|descriptive]]" marks on the one hand, and between "[[Descriptive mark|descriptive]]" and "[[Generic mark|generic]]" marks on the other. This is because [[suggestive mark]]s, like [[fanciful mark|fanciful]] and [[arbitrary mark]]s, are presumed to be entitled to [[trademark]] protection, while [[descriptive mark]]s are entitled to protection if they have become known as representing the producer of the [[goods]], and [[generic mark]]s can never receive protection. The distinctive character of a term is closely related to the [[products]] or [[services]] in relation to which the term is used.

A general method for assessing the distinctive character of a [[mark]] is to consider a consumer's reaction to a [[mark]]. The [[mark]] may only be [[inherently registrable]] if the consumer has never encountered the [[mark]] before. On the other hand, the [[mark]] is unlikely to be [[inherently registrable]] if it informs him about any characteristic of the relevant [[products]] or [[services]] (e.g. whether they are delicious, large, spicy, black or sweet, in the case of fruit). In any other case the [[mark]] may not be [[registrable]]. 

Therefore [[mark]]s that identify or describe a [[product]] or [[service]], or that are in common use, or that are used as [[geographical indication]]s, generally cannot be [[Trademark registration|registered as trademarks]], and remain in the [[public domain]] for use by anyone. For example, a "[[generic]]" term such as "apple", or "descriptive" terms such as "red" or "juicy" could not be [[Domain name registration|registered]] in relation to apples.

Primary consideration in the selection and use of [[trademark]]s should be given to [[mark]]s which are [[inherently distinctive]], as they possess the strongest distinctive character and do not require evidence of use to establish [[acquired distinctiveness]]. A [[fanciful]], [[arbitrary]], or [[suggestive]] term can be [[inherently distinctive]] and [[registrable]] without proof of [[acquired distinctiveness]].

Although these categories are most easily applied in relation to [[trademark]]s comprising words, the same general principles are applied in relation to all kinds of [[trademark]]s. For example, a pine tree shape is descriptive when used on pine-scented products.

== Acquired distinctiveness ==

A trademark with no distinctive character (ie. a mark which is not [[inherently distinctive]]) is [[prima facie]] [[unregistrable]]. However, most jurisdictions may still allow such [[mark]]s to be [[Trademark registration|registered]] if the [[trademark owner]] can demonstrate, typically by reference to evidence of use, that consumers in the marketplace exclusively associate the [[mark]], as used on the identified [[goods]] or in connection with the identified [[services]], with a particular commercial origin or source (i.e., the [[trademark owner]]). "Use" may include authorized use by a [[licensee]] or other party. If the [[USPTO]] is satisfied that the evidence demonstrates that a [[mark]] has "acquired" distinctive character as a matter of fact, then the [[mark]] may be accepted for [[Domain name registration|registration]] on the basis of [[acquired distinctiveness]].

The nature and extent of acceptable evidence of use varies between jurisdictions, although the most useful evidence usually includes sales figures, details of advertising and promotional expenditure, and examples of promotional material. Consumer surveys may also help establish that consumers chiefly associate an otherwise non-distinctive [[mark]] with the [[trademark owner]] and its [[products]] or [[services]]. Generally, evidence of use may only be acceptable or relevant if it covers a certain period of time (e.g. three years prior to the filing date of the [[trademark application]]) and originates from within the jurisdiction where [[Domain name registration|registration]] is sought.

The terminology of [[acquired distinctiveness]] is accepted in the [[European Union]] and Commonwealth jurisdictions such as Australia, Hong Kong and the United Kingdom, and the [[common law]] jurisdiction of the United States (which also uses the term "[[secondary meaning]]"). In the United States, if a [[trademark]] has been used for a continuous period of at least five years after the date of [[Trademark registration|registration]], the right to use the [[mark]] and the [[Trademark registration|registration]] may become "[[incontestable]]" (e.g., invulnerable to [[cancellation]] for non-use, but not for becoming [[generic]]). In such cases the [[USPTO]] checks and confirm whether the request for [[incontestability]] meets formality requirements, but whether a [[Trademark registration|registration]] is [[incontestable]] at law can only be determined during legal proceedings involving the [[Trademark registration|registration]].

== References ==
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{{Wikipedia|Trademark distinctiveness}}
[[Category:Trademark]]