What is trademark distinctiveness anyway?
On August 2, 2021, the Eleventh Circuit Court of Appeals (the federal appellate court for Florida, Georgia, and Alabama) issued a lengthy opinion (here) regarding—but not fully resolving—a trademark dispute between two advertising companies, both named Pinnacle Advertising and Marketing Group (one is based in Illinois, the other in Florida). The opinion covers a lot of ground. I won’t bore you with all the details, but there were a few points that are just crucially important for anyone looking to register a trademark and protect their brand.
Here’s the case ELI5: these two companies have the same name, but only one of them (Pinnacle Illinois) has registered the name with the U.S. Patent and Trademark Office (PTO). That company sued the other (Pinnacle Florida) in federal court for trademark infringement. Pinnacle Florida counter-sued asking the court to cancel Pinnacle Illinois’s trademark as “merely descriptive.” (I’ll explain what that means and why it’s important below.) The trial court gave the green light on the cancellation counterclaim, but yesterday the appellate court hit the breaks. The Eleventh Circuit panel vacated that order because, among other reasons, the trial court didn’t determine exactly what Pinnacle Florida needed to prove to cancel the trademarks—whether they lack acquired or inherent distinctiveness.
So why is this case important for startups or anyone thinking of starting a business? Because, in the words of Judge Branch: “[d]istinctiveness is the key to trademark protectability.” Pinnacle, Slip. Op. 21. And cultivating and protecting your trademarks is key for any business.
Your trademarks are either inherently distinctive or need to be capable of acquiring distinctiveness
Only distinctive trademarks (marks that serve the purpose of identifying the source of goods or services) are entitled to federal trademark protection. But what is distinctiveness?
There are two ways that trademarks can be distinctive: they can either be inherently distinctive or they can acquire distinctiveness over time. Only inherently distinctive trademarks can seek immediate protection. We call those trademarks “arbitrary,” “fanciful,” or “suggestive.” The Trademark Manual of Examining Procedure section 1209.01(a) provides some good definitions and examples for these types trademarks:
Fanciful marks – these include words that are either unknown (giving examples like PEPSI or KODAK) or that are out of common usage. These trademarks are invented for the sole purpose of being a trademark.
Arbitrary marks – these use words that are in linguistic use but when used with the identified goods/services of the trademark do not describe those goods/services (giving examples like APPLE for computers or OLD CROW for whiskey).
Suggestive marks – these require imagination or thought to reach the goods or services identified by the trademark (giving the example SPEEDI BAKE for frozen dough because it “only vaguely suggests a desirable characteristic of frozen dough” that it “quickly and easily may be baked into bread”).
On the other hand, if your trademark is deemed to be merely descriptive of your goods and/or services—meaning “it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services,” see TMEP section 1209.01(b)—then your mark must be capable of acquiring distinctiveness for protection and registration. That’s what Pinnacle Florida was arguing in its counterclaim—that the other Pinnacle’s trademark was descriptive and had not acquired distinctiveness to merit trademark protection.
So how do your descriptive marks acquire distinctiveness? According to the appellate panel in Pinnacle, trademarks that have acquired distinctiveness are “marks that initially might have described a broad class of products, but that over time developed ‘secondary meaning . . . that links [the mark] to a particular source.” Another recent Eleventh Circuit panel, in Royal Palm Properties v. Pink Palm Properties, No. 18-14092 (link), provided a succinct explanation of what that means:
A mark obtains a secondary meaning—and therefore acquires distinctiveness—when, in the minds of the relevant consuming public, the “primary significance of the term . . . is not the product but the producer.” Am. Television & Commc’ns Corp. v. Am. Commc’ns & Television, Inc., 810 F.2d 1546, 1549 (11th Cir. 1987) (quotation omitted). So, in this case, Pink Palm Properties had the burden to prove the opposite—that when the relevant consumers hear “Royal Palm Properties,” they think of the “product”—i.e., the homes within Royal Palm Yacht & Country Club—rather than the “producer”—i.e., the specific brokerage services that Royal Palm Properties provides.
Royal Palm, Slip. Op. 13.
Of course, whether your trademark is merely descriptive of your goods and/or services or suggestive—meaning it requires some imagination or thought to link the mark to those goods and/or services—is highly nuanced. If you can successfully demonstrate that your trademark is suggestive instead of descriptive, then it doesn’t need to acquire distinctiveness and it can be registered right away. Courts and the Trademark Trial and Appeal Board (TTAB) will often look to “incongruity” in word combinations to guide whether the trademark is suggestive rather than merely descriptive. See In re Shutts, 217 USPQ 363, 364–5 (TTAB 1983) (SNO-RAKE held not merely descriptive of a snow-removal hand tool because a classic rake would not be a useful snow-removal tool).
This suggestive/descriptive dichotomy is another good reason to have an experienced trademark attorney help you with branding and trademark registration.