Choosing Registrable Trademarks

Some signs are easier than others to register in relation to particular goods or services. The legal test in Australia is whether the trademarks are ‘adapted to distinguish’ particular goods or services. In the US, trademarks are put into categories that can be arranged along a scale often referred to as the ‘Spectrum of Distinctiveness’.

Not all trademarks are created equal

It’s true: not all trademarks are created equal. Some words are innately suited to being registered as trademarks for certain goods and services, while others are very difficult or even impossible to register.

In Australia, section 41 of the Trade Marks Act 1995 (Cth) provides that a trademark application must be rejected if the trademark is ‘not capable of distinguishing’ the particular goods or services. This concept is also referred to a trademark not being ‘sufficiently distinctive’.

Given the fact that there are so many reasons to register your trademark, when choosing your brand name it’s useful to know whether or not your trademark is sufficiently distinctive to be registrable, and if so, how easily they can be registered.

The spectrum of distinctiveness: a way to classify trademarks

In the United States, the law formally divides up all trademarks into different categories that can be arranged along a ‘scale’ or a ‘continuum’ which determines whether trademarks are capable of being registered. This scale is often called the ‘spectrum of distinctiveness’.

While the ‘spectrum of distinctiveness’ has been referred to by Australian judges from time to time, it is technically not part of Australian Law. However the concept is still helpful in an Australian context to determine both registrability and the potential difficulties in registering a particular trademark. Here’s our version:

Categories of distinctiveness

1. Generic terms

Generic terms are words that are the actual names used to describe categories of products or services. ‘Juice’, ‘biscuit’, ‘tractor’, ‘massage’ and ‘plumber’ are all words that would be considered generic if used for the products which they describe.

By themselves, generic terms can’t be registered as trademarks in relation to the goods or services that they describe. This is because a trademark gives one trader a monopoly over that word, and this would give that trader an unfair advantage over its competitors.

2. Nondescript marks

Nondescript marks are letters or numbers (either alone or in combination with others) that lack the distinctive character which would normally be required to let them function as trademarks. Examples of nondescript trademarks include:

• single letter marks such as ‘a’ or ‘z’
• with certain exceptions, double letter marks such as ‘ab’ or ‘cl’
• numbers (whether alone or in combination with other numbers)
• a number spelt as a word (e.g. ‘three’)
• with certain exceptions, one or two letters spelt as a word (e.g. ojay)

Nondescript trademarks are generally not considered to be sufficiently distinctive to enable them to be registered as trademarks. However they can be registered in some circumstances, particularly if the trademark applicant can produce enough evidence of use to show that the mark has become associated with the one business.

3. Descriptive marks

Descriptive marks consist wholly of words that are ordinarily used to indicate:

• the kind of the particular goods or services: ‘College of Law’, ‘Sedan’, ‘Post Office’, ‘Mint Slice’
• the quality of the particular goods or services (e.g. ‘Best’, ‘Biggest’, ‘Number 1’)
• the quantity of the particular goods or services (e.g. ‘Whopper’; ‘2 Litres’)
• the intended purpose of the particular goods or services (e.g. ‘Automotive News’)
• the value of the particular goods or services (e.g. ‘Two for one’)
• the geographical origin of the particular goods or services (e.g. ‘Oxford’)

Descriptive marks are generally not registrable in the absence of evidence of use or other special circumstances.

The amount of use required to enable registration of a descriptive mark will vary from case to case. This is because descriptiveness is not a singular concept: there is a continuum running from highly descriptive to mildly descriptive. For example, ‘The Cleaning Company’ is more descriptive than ‘Spotless’.

4. Suggestive marks

Next to mildly descriptive marks on the continuum are suggestive marks. These indirectly allude to, or indicate, a quality of a product or service without actually describing that product or service. It requires imagination, thought or even an educated guess in order to work out the goods or services that are being trademarked.

Examples of suggestive marks include:

• ‘Greyhound’ for coach services
• ‘Land Rover’ for passenger vehicles
• ‘Twitter’ for micro-blogging
• ‘Seek’ for employment advertising

Suggestive trademarks are usually easier to register than descriptive marks because it’s less likely that other traders will think of that word and want to use it in relation to similar goods and services.

5. Arbitrary marks

Arbitrary trademarks bear no apparent relationship to the goods or services which they are used to signify. Arbitrary trademarks might be ordinary words used in an unusual or ‘fanciful’ way:

• Apple for computers
• Nike for sports goods
• Starbucks for coffee

Arbitrary marks might also be coined words:

• Exxon for oil and gas
• Smiggle for stationery
• Xerox for photocopiers
• Pepsi for cola drinks

Finally, arbitrary marks might also be acronyms:

Qantas for an airline carrier (an acronym for ‘Queensland And Northern Territory Air Service’)
IBM for a computer company (an acronym for ‘International Business Machines’)

As will be clear from the Spectrum of Distinctiveness, arbitrary marks are by far the easiest to register as trademarks. There is little chance that an honest competitor will think of the word and want to use it, and therefore the law is happy to give protection to these marks.

Categorisation is an art not a science

The distinctiveness spectrum is not a scientific tool for a couple of reasons.

First, the categories shown in the above Distinctiveness Spectrum overlap as there are no clear dividing lines. For example, a ‘mildly descriptive’ name could also be classified as ‘highly suggestive’.

Further, often different people will categorise the same trademark in different ways. For example, ‘Nike’ is the winged goddess of victory in Greek Mythology. Is that an arbitrary trademark (because it bears no apparent relationship with sports goods) or a suggestive one (because it alludes to the sporting concept of victory)? The answer might depend upon the degree of familiarity that your audience has with Greek Mythology. Similarly, ‘The Cleaning Co’ might be purely generic in relation to cleaning services, or it could be classified as highly descriptive, because it refers to the intended purposes of the services.

Nevertheless, this classification helps to determine whether trademark examiners are likely to raise objections to particular trademark applications under section 41 of the Trade Marks Act 1995 (Cth). In that way, it can also help to indicate how expensive and time consuming it will be to register your trade mark.