Distinctiveness Requirement

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Distinctiveness: - The ability of a mark to distinguish in commerce the goods and services of one party form those of another

Continuum of Distinctiveness


  1. Generic Marks - Marks which are the common name of goods and/or services or a category of goods and/or services
    • Generic marks may never be protected.
      • This statement is subject to the "Primary Significance Test". Under it, a generic mark can be protected if its primary significance in the minds of the consuming public has become a single specific source of goods and/or services, rather than the goods and/or services themselves.

  2. Descriptive Marks - Marks which describe in plain and ordinary use of the language the features, qualities, ingredients, or uses of products and/or services.

  3. Suggestive Marks - Suggestive marks evoke features of products and/or services in a way that requires the use of the consumer's imagination, thought or perception and that does not merely describe them.
    • Suggestive marks are considered inherently distinctive and, thus, are protectible without any further showing.

  4. Arbitrary Marks - Marks which use commonly known words or terms in an unusual or unfamiliar way which is not typically considered related to the goods and/or services.
    • Arbitrary marks are considered inherently distinctive and, thus, are protectible without any further showing.

  5. Fanciful Marks - Marks which are words or terms created solely for use as trademarks.

Distinctiveness threshold:

Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137 (2d Cir. 1997)

Capacity to be distinctive:

In Re Owens-Corning Fiberglass Corp., 774 F.2d 1116 (Fed. Cir. 1985)

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