From Generic to Iconic: How to Trademark Descriptive Brand Names.

Prospective clients often approach me with great enthusiasm about a new brand name they've recently created. They excitedly share that they have already started producing their products featuring this branding. When I ask for the brand name, it frequently turns out to be a simple, descriptive label for their business, lacking creative flair (e.g., "Chicago Denim" for a jeans company in Chicago or "Los Angeles Chiropractic" for a chiropractor in Los Angeles). These descriptive names are challenging to trademark. I usually advise clients against launching businesses with such names to avoid future complications.

This article briefly explores the options available to business owners who have already begun operating with a merely descriptive brand name and explains how they can ultimately achieve trademark registration.

In the competitive world of commerce, a strong and recognizable brand is a key asset for any business. Trademarks play a pivotal role in establishing and protecting these brands, enabling businesses to differentiate their goods and services from competitors. One particularly valuable form of trademark recognition is "acquired distinctiveness," a legal concept that allows businesses to transform otherwise descriptive or generic terms into protectable trademarks. This article delves into the concept of acquired distinctiveness in the context of US trademarks, highlighting how businesses can leverage it to build enduring brand identities.

Understanding Trademarks and Acquired Distinctiveness

A trademark is a distinctive symbol, word, phrase, design, or combination thereof that identifies and distinguishes the source of goods or services. Trademarks help consumers make informed purchasing decisions by associating certain qualities and attributes with a particular brand.

Acquired distinctiveness, also known as secondary meaning, refers to the transformation of a descriptive or generic term into a protectable trademark through continuous and exclusive use in commerce. Generally, descriptive or generic terms are have difficulty receiving trademark protection, as they merely describe the nature, quality, or characteristics of the goods or services. Oftentimes they will end up on the Supplemental Register initially. However, when a term acquires distinctiveness in the minds of consumers, it becomes associated with a particular brand and can be protected on the Principal Register.

Requirements for Acquired Distinctiveness

To establish acquired distinctiveness, a business must demonstrate that consumers now primarily associate the descriptive or generic term with its brand rather than its ordinary meaning (i.e.: Best Buy, Supreme, American Airlines). This requires substantial evidence of the term's recognition as a brand identifier. Some factors that contribute to establishing acquired distinctiveness include:

1. Duration of Use: The longer a term has been consistently used in commerce, the more likely it is to have acquired distinctiveness.    

2. Extent of Use: Widespread and consistent use of the term in advertising, marketing materials, and on products or services strengthens the case for acquired distinctiveness. Generally the USPTO wants to see you operating for 5 years.

3. Advertising and Promotion: Significant investments in advertising and promotional activities that focus on the term as a brand identifier can demonstrate consumer recognition.

4. Survey Evidence: Consumer surveys can provide insight into whether the term is associated with the brand in the minds of consumers.

5. Media Recognition: Positive media coverage that links the term to the brand can support the claim of acquired distinctiveness.

6. Market Share: A substantial market share or proven consumer loyalty can indicate that consumers identify the term with the specific brand.   

7. Evidence of Copying: Competitors using similar terms to describe their own products or services can imply that the term has acquired distinctiveness.

Benefits of Acquired Distinctiveness

Acquired distinctiveness provides businesses with several benefits:

1. Trademark Protection: Once a term has acquired distinctiveness, it can be registered as a trademark with the United States Patent and Trademark Office (USPTO), granting exclusive rights to use the term in connection with specific goods or services.

2. Enhanced Brand Value: Brands with acquired distinctiveness are more likely to be remembered by consumers and can command higher value due to their unique associations.

3. Legal Protection: Acquired distinctiveness can deter competitors from using similar terms, protecting the brand's identity and reputation.

Challenges and Considerations

Establishing acquired distinctiveness can be challenging and requires significant effort, time, and investment. Businesses must carefully compile and present evidence to persuade the USPTO or courts that the term has acquired secondary meaning.

It's also important to note that the level of evidence required to prove acquired distinctiveness may vary depending on the specific term, industry, and circumstances.

Conclusion

Acquired distinctiveness offers businesses an opportunity to turn descriptive or generic terms into valuable and protected trademarks. By building consumer recognition and association, companies can enhance their brand identities, protect their market share, and establish a lasting presence in the competitive marketplace. Through strategic use of evidence and expert legal guidance, businesses can successfully achieve acquired distinctiveness and ensure their trademarks stand out in the minds of consumers.

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