Why is Being ‘Inherently Distinctive’ Important to a Trademark or Service Mark?

A Strong Trademark is a Bigger Piece of Intellectual Property.


An inherently distinctive trademark is a strong trademark. An inherently distinctive trademark may be registered on the USPTO Trademark Principal Register, qualifies for more protection under more federal, state and common law and is stronger for use in business to promote authenticity and for expanding product lines. The distinctiveness of a trademark may also help protect the mark from problems with conflicting marks and counterfeiting.

The stronger the trademark the greater protection received from the courts. Nike, Inc. v. Just Did It Enterprises, 6 F.3d at 1231 (C.A.7 (Ill.), 1993) quoting Squirtco v. Seven-Up Co., 628 F.2d at 1091 (8th Cir.1980). This factor [trademark strength] can also include the likelihood of expansion of the product lines. Nike, Inc. v. Just Did It Enterprises, 6 F.3d at 1231 (C.A.7 (Ill.), 1993) quoting Grey v. Campbell Soup Co., 650 F.Supp. at 1173 (C.D.Cal.1986). See StrongTrademark.com for more information.


The opposite of an inherently distinctive mark is a descriptive mark or a mark that does not function as a mark such as an ornamental mark. Descriptive marks are much harder to protect, they must first acquire secondary meaning or acquired distinctiveness:

"Descriptive" marks "merely describe a function, use, characteristic, size, or intended purpose of the product," such as YELLOW PAGES telephone directories and 5 MINUTE glue. And this class of marks includes those that are geographically descriptive, such as BOSTON beer produced by a Boston-based brewer, BANK OF AMERICA, and MISS U.S.A. No descriptive mark can serve as a valid trademark without evidence of secondary meaning. Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 629 (4th Cir.2003). "Secondary meaning" in connection with geographically descriptive marks means that the mark no longer causes the public to associate the goods with the geographical location, but to associate the goods with a particular product or source of the product. See Resorts of Pinehurst, Inc. v. Pinehurst Nat'l Corp., 148 F.3d 417, 421 (4th Cir.1998); Boston Beer Co. Ltd. P'ship v. Slesar Bros. Brewing Co., 9 F.3d 175, 181 (1st Cir.1993); see generally 2 McCarthy, supra, §§ 15:1-5. In this manner, KENTUCKY fried chicken and AMERICAN airlines are geographically descriptive marks that have established secondary meanings in consumers' minds, causing consumers to recognize a brand or source of fried chicken or air travel, rather than the places, Kentucky and America. OBX-Stock, Inc. v. Bicast, Inc., 558 F.3d 334, 339 (4th Cir.2009).


"Another test of descriptive-suggestive connotations is to determine the extent to which other sellers have used the mark on similar merchandise. That is, if others are in fact using the term to describe their products, an inference of descriptiveness can be drawn." Cutter Labs., Inc. v. Air Prods. & Chems., Inc., 189 U.S.P.Q. 108 (T.T.A.B. 1975); McCarthy § 11:69.


Descriptiveness is construed broadly. [See Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 217 USPQ 988 (5th Cir.1983)]. Indicia include: (1) the mark's dictionary definition corresponds with its meaning and context; (2) upon hearing the mark, one need not use "imagination, thought and perception to reach a conclusion as to the nature of goods;" (3) "competitors would be likely to need the terms used in the trademark in describing their products;" and (4) others have used the term in marketing a similar service or product.  Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 227 (5th Cir.2009).


Trademark refusal office actions are a big problem with merely descriptive trademarks that are not inherently distinctive. Overcoming the merely descriptive or descriptiveness refusals may require both effective arguments and evidence, sometimes a lot of evidence. Sometimes a trademark applicant’s mark is so highly descriptive that the prima facie case of distinctiveness which must be established by applicant requires better evidence or more evidence because the purchasing public will be less apt to view the term as a trademark. The “greater the degree of descriptiveness the term has, the heavier the burden to prove it has attained secondary meaning.” See In re Bongrain International Corp., 894 F.2d 1316, 1317 n. 4, 13 USPQ2d 1727, 1728 n. 4 (Fed. Cir. 1990).


In the illustration below, acquired distinctiveness  (red arrow) can potentially move a trademark’s distinctiveness to the left but note that no amount of acquired distinctiveness can turn a generic mark into a distinctive mark. See more on acquired distinctiveness for Section 2(f) or 2(f) in part at Trademark2f.com.






















PLAN FOR A SUCCESSFUL, STRONG TRADEMARK

To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these five steps:

1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions),

2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)

3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)

4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimen refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs  which can slow down a registration. Incorrect IDs  may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)

*We don’t stop here but this is a good start!


Call us at 1-651-500-7590   for a Strong Trademark. A Strong Trademark is Not Just a tool to increase sales to customers–it is also easier to sell to your investors & licensees.

We can help you create and protect an inherently distinctive trademark.


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Call 1-651-500-7590 or email IP@GoNJP.com or ContactTrademark.com for Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Filing Requirements for Patent Applications

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File   How to Trademark Search

37 CFR § 1.53 Application number, filing date, and completion of application

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Difference between Provisional and Nonprovisional Patent Application

Opposition Pleadings    UDRP Elements    Loss of Trademark Rights

How To Answer A Trademark Cease and Desist Letter

Shop Rights  What is a Small or Micro Entity?

Trademark Refusals    Does not Function as a Mark Refusals

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent Pending see also Patent Marking

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

Patent Drawings

Grounds for Opposition & Cancellation     Cease and Desist Letter


Valid/Invalid Use of Trademarks     Trademark Searching

How to Respond to Office Actions

What is a Compact Patent Prosecution?


Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Patent search-New invention

Color as Trade Dress  3D Marks as Trade Dress

Patent Search-Non-Obvious

Ornamental Refusal  Standard TTAB Protective Order

How to Keep A Trade Secret

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

State & Federal Trade Secret Laws

Merely Descriptive Trademarks   Merely Descriptive Refusals

Chart of Patent vs. Trade Secret

Register a Trademark-Step by Step   Trademark Fixer

ID of Goods and Services see also Headings (list) of International Trademark Classes

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Geographically Descriptive or Deceptive

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Section 2(d) Refusals   ApplyToTrademark.com

Trademark Incontestability  TTAB Manual (TBMP)

Typical Brand Name Refusals  What is a Family of Marks?

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process

Zombie Trademark  Not Just Patents Often Represents the Underdog  

What Does Published for Opposition Mean?

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Acquired Distinctiveness  2(f) or 2(f) in part

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

Extension of Time to Oppose

Trademark Clearance Search   DIY Trademark Strategies


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