Distinctiveness in Trademark Law

November 17, 2021

As trademarks give their owners a monopoly right to identify their products or services an important caveat about them is that they must be distinctive.

A generic identifier such as the colour yellow for Cheerios or a name that too closely describes the products and services on offer is not going to pass the distinctiveness test to qualify for trademark protection. That’s because the legal system aims to keep terms or elements that others need to use free for all to use.

The law is not there to reduce competition by giving a monopoly right over generic, common category terms and elements to a single brand owner. That’s why choosing names that include a generic element doesn’t give you a monopoly right over the generic component. For example, Pizza Express is trademarked. Obviously, this doesn’t stop anyone else who sells pizza from using the word pizza to describe their offerings or as part of their brand names. Hence Pizza Hut is also a registered trademark. This combination of words with Pizza are sufficiently distinctive to qualify as trademarks, although these registrations do not stop other brands from using the words Hut or Express in their brand names. It just stops brands in the category from using Hut or Express. So, Tesco Express can be used as a name in the food category.

If someone chose a name like Fresh Pizza and tried to register that as a trademark the word Fresh would not add sufficient distinctiveness to the generic word Pizza to qualify for protection. That means the name would be incapable of functioning as a trademark. The word Fresh is one that other pizza sellers might legitimately want to use to describe their Pizzas, so it lacks distinctiveness in that context.

On the other hand, if you sell bags and umbrellas and want to use the brand name Fresh then that’s a distinctive word that you can register with or without the descriptor Umbrellas or bags because competitors supplying umbrellas and bags do not legitimately need to use the word Fresh to refer to bags and umbrellas. The word Fresh is distinctive in that category. So,  there is always an interplay between the products and services and the name or logo or colour in the Cheerios example. Yellow was perfectly fine for 3M because it was not an industry colour in their category. It is so important to use identifiers that are capable of functioning as trademarks. Another way of saying that, is that it’s necessary to create identifiers that are distinctive.

Whether a name or other brand element is sufficiently distinctive to function as a trademark is an essential consideration because if it is not sufficiently distinctive it means competitors are freely able to also use that name or brand element too.

If the name is not distinctive enough to function as a trademark this inevitably reduces the brand’s equity and value. You essentially have a colander instead of a container for the brand equity. This necessarily impacts sales revenues because it reduces the ability of consumers to identify that it’s you. When you can’t prevent competitors from using the same or similar brand name you’re inviting consumer confusion, and lower sales.

Protectability of brand elements should be considered before finalising branding decisions because there are many rules in trademark law that could result in a chosen brand identifier not being deemed sufficiently distinctive. The time to know this is before finalising the brand creation work.

The name is particularly important, and like any other identifier, you want to adopt it’s essential to first check whether it is legally available, i.e. that it’s not already used by others in the category. Protecting identifiers by registering them as trademarks is crucial given that the brand equity attaches to the name. If I am introducing a new name, I apply to register it as a trademark before revealing the name to the world.

Names and taglines involve a host of considerations that go beyond the scope of this blog.

 

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Shireen Smith , advises SMEs on how to turn ideas for new business concepts, products or services into protectable IP. Building a business on strong legal and IP foundations is how you increase the value of a business. For help to create, identify, protect, and defend your business assets.

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