How to Create a Strong Trademark? Key Elements and Legal Considerations

he most basic element required for a phrase to be registered as a trademark and to be legally protected is distinctiveness. Distinctiveness can be defined as whether a trademark can be expressed by consumers as belonging to a business. This concept is generally examined under two main headings: intrinsic distinctiveness and concrete (acquired/secondary meaning) distinctiveness.

The first and most important of these is abstract distinctiveness. Because when the phrase that creates the trademark does not have abstract distinctiveness, it is difficult to talk about concrete distinctiveness. Therefore, it is necessary to know that it is quite difficult to protect a phrase that does not have abstract distinctiveness as a trademark.

If the concept of abstract distinctiveness is to be explained in more detail; it would not be wrong to say that a trademark has a structure that is not original and descriptive at first glance. In this case, the trademark leaves a unique impression in the minds of consumers without being directly associated with the product or service it is used for. For example, completely made-up words or arbitrarily chosen designs (for example, “Kodak” or “Xerox”) have the highest level of abstract distinctiveness. Therefore, choosing simple words that are already known and used will not be the right approach to creating a brand.

Even if you have an abstract distinctive brand with this method, this alone will not be able to prevent your brand from being a weak (low protection power) brand. Because abstract distinctiveness alone will not be enough for your brand to be highly distinctive.

In this context, the second thing to do is to evaluate whether your brand has concrete distinctiveness. So what is this concrete distinctiveness?

In its shortest form, concrete distinctiveness is a type of distinctiveness obtained by the brand being identified with a specific product or service in the consumer's mind during the usage process and not being descriptive in terms of the goods and services they are used for. In other words, in order to have this type of distinctiveness, either your brand should not be descriptive in terms of the goods and services they are related to, or the signs that may initially contain descriptive or general meanings should be perceived as representing a specific source as a result of long-term and intensive usage. This process is also called “secondary meaning” and is an important criterion in trademark registration.

The World Intellectual Property Organization (WIPO), one of the most important sources of trademark law, considers both the intrinsic characteristics of the sign and its recognition in the market when evaluating trademark distinctiveness. In some decisions, it is exemplified that a brand that initially exhibits descriptive characteristics becomes eligible for registration with the secondary meaning gained as a result of long-term use. Such decisions reflect the perception of brands in real-world use and market dynamics. The US Patent and Trademark Office (USPTO), another important organization in this field, also acts within the framework of similar principles. When evaluating the distinctiveness of brands, the USPTO looks at whether the sign is “fanciful” or “arbitrary”. While invented or randomly selected brands are generally considered inherently distinctive, descriptive brands are only eligible for registration with the secondary meaning gained as a result of long-term use. In some cases of the USPTO, decisions that have been rejected as descriptive have become registrable thanks to consumer perception and established positions in the market stand out.

In conclusion, the decisions of both WIPO and USPTO reveal how critical the concept of distinctiveness of trademarks plays in the international arena. If you intend to create a brand from scratch, you should pay attention to such situations in order not to lose your rights later and be careful when creating your brand. If you already own a non-distinctive brand, do not worry; remember that the consumer perception gained through the process of use, as well as the initial innate characteristics of the sign subject to the brand, are effective in determining the value and protectability of the brand. Do you have any questions about trademark protection? Feel free to share your thoughts in the comments!