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Protecting Your Creativity: Is it a Plane or a Swirly-Bird?

Posted by attorney Steven Rensch

Protecting Your Creativity: Is it a Plane or a Swirly-Bird? (

Now that we know what a trademark is, and how the public policy rationale influences the need for trademark infringement protection, the next issue is what types of marks are registerable. The short answer is that in order to register a trademark, the mark must be distinctive, and cannot fall into one of the excluded categories. Today I take up the issue of “distinctiveness."

Remember that source designation is the crux of trademark law. Requiring a mark to be sufficiently distinct insures that the mark aptly designates its source while not stifling competition.

Marks generally fall into one of three categories of distinctiveness: 1) inherently distinctive marks; 2) marks capable of acquiring distinctiveness; and 3) generic terms. Generally speaking, inherently distinctive marks are those that standing alone are sufficiently distinct. Marks capable of acquiring distinctiveness include those marks which are not inherently distinctive, but which may acquire “secondary meaning" sufficient to acquire protection. Lastly, generic terms are those in which the mark simply signifies a category as opposed to a specific source.

For instance, if the Wright brothers sought trademark protection for the word “airplane" under current trademark law, their application would have been denied because “airplane" signifies a category as opposed to a specific source, and as such, is a generic term. Conversely, the word “Nike" is inherently distinctive, meaning that it sufficiently identifies the source of the goods without stifling competition. Lastly, a famous example of a mark that was not inherently distinctive, but which acquired sufficient secondary meaning is “Coca-Cola." At one point in time the phrase “coca-cola" was merely descriptive of the drink. That is, that the cola was in made in part from a coca plant. However, after years of use, the phrase “Coca-Cola" has come to be recognized as a source identifying mark. Thus, because Coca-Cola has acquired sufficient secondary meaning, Coca-Cola although not inherently distinctive, is sufficiently distinct to obtain trademark protection.

Remember that in order to register, the mark must be distinct and cannot fall into one of the excluded categories. Next, I take up the second half of this analysis by discussing the excluded categories.

Steve Rensch and Zach Price


3850 E. Baseline Road, Suite 105

Mesa, AZ 85206 (

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