When you need an acquired distinctiveness survey to provide credible evidence of whether a descriptive word, design, or trade dress qualifies for trademark protection, consider Keegan & Donato Consulting.

Keegan & Donato Consulting is a specialty research consultancy located in Rye, New York. We provide a complete suite of services, including consulting on litigation strategy for both plaintiff and defendant clients across the nation, consumer research studies, expert reports, testimony in trademark and trade-dress litigation, testimony at deposition and/or trial, and rebuttal of opposing parties’ surveys, when applicable.

The Strength of a Mark

One of the main purposes of a trademark is to prevent consumer confusion. When too similar, a mark may confuse consumers into purchasing an unwanted brand, damage or dilute a brand’s reputation, or allow competitors to benefit from the established reputation of another brand.

Consequently, a word or design can receive trademark protection only when it is distinctive. Consumers must to able to distinguish the mark from the mark associated with your competitors’ products. The more distinctive a trademark is, the stronger it is. The five categories of trademarks recognized by the USPTO (U.S. Patent and Trademark Office) are ranked below in order of their degree of inherent distinctiveness:

• Fanciful marks: These marks consist of an invented term that has no inherent meaning and is created for the sole purpose of functioning as a trademark. Fanciful marks are the strongest type of trademark. Well-known examples include Pepsi for carbonated soft drinks and Exxon for fuel products.
• Arbitrary marks: These marks are commonly recognized real words, but they signify something entirely unrelated to the products or services being offered. Well-known examples of arbitrary marks include Camel for cigarettes and Apple for computers.
• Suggestive marks: These marks hint at or suggest the quality or nature of a product or service without actually describing it. It requires the consumer to use his or her imagination to perceive what the product is. Well-known examples of suggestive marks include Netflix for media services and KitchenAid® for kitchen appliances.
• Descriptive marks: These marks consist of a word or words that describe ingredients, qualities, or design characteristics (including trade dress) of the goods being sold. Descriptive marks cannot usually be granted trademark protection, but may become protectable if they achieve secondary meaning or acquired distinctiveness. Examples include Windows® for windowing software and Best Buy® for consumer electronics.
• Generic marks: These marks describe a category of product or service, such as “bread” or “clock,” and the public perceives and uses them solely as common nouns or terms. Generic marks cannot be afforded trademark protection.

Descriptive Marks & Acquired Distinctiveness

When a company has gained recognition in the minds of consumers for their products or services by continuously and exclusively using a descriptive trademark for more than five years, the mark has most likely acquired distinctiveness.

Acquired distinctiveness means that consumers have come to associate the mark with a single source because they have become very familiar with the mark and the brand behind the mark. In these circumstances, the mark is no longer considered descriptive since consumers primarily associate it with a single company.

Acquired distinctiveness is often measured through consumer survey research. Keegan & Donato Consulting has extensive experience conducting acquired distinctiveness surveys. We employ both classic survey designs as well as innovative custom survey designs developed to suit each client’s needs.

Please contact Keegan & Donato Consulting at (914) 967-9421 to discover how consumer data can help prove that your client’s trademark has achieved acquired distinctiveness..