How to Prove That Your Trademark is Distinctive

By Doni Robinson

Any trademark lawyer will tell you that no company should develop a brand without first ensuring their name is entitled to trademark protection. It is ideal to have this discussion at the outset so clients can avoid the painstaking journey of either rebranding or being forced to exist in the marketplace without a registered trademark. But what happens when a client who has spent incredulous time, money and effort to establish a name and obtain an outstanding reputation but still cannot obtain trademark registration because it is too “descriptive”? Jayaram Law has succeeded in obtaining protection under these circumstances anyways.

If a proposed mark is not inherently distinctive to a consumer because the mark itself is descriptive of the goods or services, the USPTO will refuse to register the mark. In two recent trademark victories, Jayaram Law was able to leverage its clients’ impressive efforts to obtain registration of otherwise allegedly descriptive trademarks on the basis that their marks have established themselves as distinctive as applied to their goods and services. This concept is otherwise known as “acquired distinctiveness” or “secondary meaning”.

In the case of RESTAURANTWARE, Jayaram Law fought hard to overcome multiple refusals to register its clients mark by demonstrating to the USPTO that the mark has come to mean something very specific to its relevant customers and peers in the industry in which it thrives. So much so that the mark must be entitled to registration because it had garnered inherent distinctiveness. By working with the client to learn how they grew their business through increased trade show attendance, analyzing SEO data, and even hearing from large players in their industry on their increasing success, Jayaram Law was able to produce a winning brief and successfully advocate for the client. Key factors such as RESTUARANTWARE’s substantial advertising expenditures and targeted advertising to large food-space clients were used to demonstrate how the brand has worked to build an association between consumers and the RESTAURANTWARE trademark.

In another similar success story, Jayaram Law was again able to tap into the success of a client who specializes in providing premium antivirus and computer security software to overcome the refusal to register the mark ANTIVIRUSSALES. In this case, Jayaram Law honed in on the over 25,000 largely positive customer reviews to show that this mark indeed had become indicative of more than just the sale of antivirus software, but also of the exceptional service provided by ANTIVIRUSSALES. A distinction acquired only through successful business practices, entitling ANTIVIRUSSALES to achieve registration. Other evidence again included statements from large industry titans demonstrating the the distinctiveness that ANTIVIRUSSALES had acquired within the industry through its years of reliable work and products.

While it’s always a best business practice to ensure the registerability of a trademark at the onset of business development, Jayaram Law knows that is not always the case. And in those instances where a mark may otherwise be refused, here at Jayaram Law we work tirelessly to achieve otherwise.