What we don’t seem to spend much time talking about is distinctiveness: what it is, how it changes, how cool it is, how to achieve it. Yet, as I read it, distinctiveness is what the Lanham Act is all about. As the convoluted language of § 2 (stated, for some reason, in the negative) tells us: “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless . . . .” One might reasonably render these words into English as: “Distinctive marks will be registered.”

The statute details significant benefits awaiting those willing to take up the challenge (and prepared to do the hard work) of creating trademarks that are sufficiently distinct. While we’re not in the habit of discussing the statute this way, the Lanham Act seems to propose a bargain: make it easy for people to distinguish your stuff in the marketplace, and we’ll put a procedural thumb on the scales for you. Seen in this light, the purpose of the Lanham Act may be characterized as less to provide proprietary protections, or even directly to prevent consumer confusion, than to incentivize distinctiveness. It’s as if the drafters recognized that people, and the businesses we create, sometimes need a nudge to move us beyond our natural tendency to conform behavior, tastes, etc., to those around us.

Thus, if the first words that come to mind when you hear “trademark” are “property,” “protection,” “infringement,” and/or “lawsuit,” I’d suggest you have a skewed view of the Lanham Act. Based on the language and structure of the statute, it would appear that the first thing the Lanham Act wants you to think about with regard to trademarks is distinctiveness. (Perhaps we could settle the age-old debate over whether to use “trademark” as a verb simply by verbing “distinctive” instead, e.g., Q: “Will the U.S. Patent and Trademark Office (USPTO) register our mark?” A: “Not until you distinctivize it.”)

As a highly fact-specific, context-dependent matter, distinctiveness can be a difficult concept to define, which is why I find it helpful occasionally to discuss trademarks in romantic terms: You’re unlikely to win someone’s heart if the other person doesn’t notice you, and you’re unlikely to get noticed if you fit the same basic description as a host of other suitors. Viewed this way, it becomes clear that trademark law is the ongoing, ever-evolving story of distinctiveness. Just as various species have spent millions of years developing (often elaborate) methods for attracting mates, merchants have, since the dawn of commerce, endeavored to catch the eyes of consumers by differentiating themselves from the competition (occasionally adopting methods—bright colors, attractive scents, impressive antlers—employed in the animal kingdom).

If trademarks were intellectual property, the language of real property (e.g., fences, stealing, etc.) might prove helpful in understanding them. But trademarks aren’t intellectual property, at least not in any meaningful sense. The Lanham Act isn’t designed to promote the progress of science and the useful arts, or to secure exclusive rights to writings and discoveries. The aim of the Lanham Act, as I see it, is to encourage people to create more distinctive trademarks than they might otherwise so as to be eligible for or to avail themselves of the substantial benefits of federal registration. The Lanham Act’s largesse isn’t a recognition of originality (as with copyrights), usefulness (utility patents), ornamentality (design patents), or ownership (real property). The benefits of federal registration flow directly and solely from distinctiveness. By framing trademarks in terms of real property instead of distinctiveness, we may unwittingly be encouraging people to ask, “How close can we get to someone else’s trademark?” If we’re willing to listen to the Lanham Act and let distinctiveness be our guide, a better question would be, “How far away from everybody else can we get?”

We like to say that trademark rights arise from use, but this seems to miss the point entirely; you can use something as a trademark all you want, but until people see it, notice it, and make the cognitive connection between the symbol (your mark), the stuff (your goods and services), and a particular source (which is to say, until people recognize your mark as a trademark), it’s not clear what (if any) trademark rights you have. Distinctiveness, then, appears to have (at least) two separate aspects. The first, which we might call absolute distinctiveness, is the ability of something to be sufficiently clear, defined, and noticeable in and of itself. The second, which we could call relative distinctiveness, is the ability of something sufficiently clear, defined, and noticeable to differentiate itself, to set itself apart, from other somewhat similar things. The challenge, for merchant and suitor alike, is to craft a strategy for capturing attention that is both noticeable (exhibiting absolute distinctiveness) and different from what others in the field are doing (thus exhibiting relative distinctiveness).

Unfortunately, we spend so much time focusing on bad marks, conflicts, and what not to do that we rarely stop to consider what good marks look like, how hard it can be to achieve distinctiveness, or the many strategies available for distinguishing one’s stuff in the marketplace. With that in mind (and on the occasion of the issue’s food theme), let’s spend a little time looking at a number of food-related trademarks registered by the USPTO and thinking about how they exemplify various approaches to getting noticed.

Exaggeration: Dairy Queen Crossed Over Curl

One way to get people’s attention is to start with something that by itself wouldn’t be particularly notable and to exaggerate it. Such is the case with the Dairy Queen crossed over curl top (see fig. 1).

Open PDF of this article's figures and tables.

As typically dispensed, soft-serve ice cream naturally comes to a point on top. Gravity being not just a good idea but the law, the pointed top of soft-serve ice cream is usually pulled downward to some extent. What is not usual, what takes extra effort, what is notable, is for the pointed top of soft-serve ice cream fully to curl down and around in a line that crosses over itself.

A long time ago (the registration certificate states a date of first use in commerce of 1948), it became customary at Dairy Queen consciously and consistently to curl the tops of soft-serve ice cream over in this fashion. Once people noticed this creamy configuration, and made the cognitive connection between the crossed over curl top and a particular source of their soft-serve ice cream, at that point Dairy Queen started accruing trademark rights, memorialized in a 1998 registration on the Principal Register based on a showing of acquired distinctiveness.

Minimization: The Izzy Scoop^®

Another way to get people to notice you is to take something others are doing and to do it to a noticeably lesser degree. Such is the case with the dramatically smaller second scoop at Izzy’s (see fig. 2).

If every other ice cream shop serves second scoops that are approximately the same size as single scoops, then changing the size of a second scoop affords an opportunity to differentiate your shop. (While diminishing the size of the bottom scoop is a theoretical possibility, from an engineering perspective, it’d be inadvisable.) Once people noticed the smaller second scoop (typically depicted in a different flavor than the larger scoop, though “contrasting flavor” is not part of the registration), and made the connection between the smaller second scoop and the source of their ice cream, that’s when Izzy’s Ice Cream truly started accruing trademark rights, memorialized in a 2012 registration on the Principal Register based on a showing of acquired distinctiveness.

Evocation: Bomb Pop^®

An effective strategy for standing apart from others is to start with something familiar and modify it to evoke something unrelated but attractive, as is the case with the Bomb Pop (see fig. 3).

This perennial favorite has been staining kids T-shirts since 1970. The underlying design has the same general shape as a typical frozen pop, but has been modified to evoke the shape of a rocket. Introduced during the Apollo program, this pop patriotically sports red, white, and blue colors as part of the registration on the Principal Register, issued in 1976.

Innovation: Twirlix

It’s also possible to set your stuff apart by doing what, in general terms, others are doing, but changing it in some fundamental, perhaps unexpected, way, as with Twirlix (“One Seriously Twisted Treat”) (see fig. 4).

Here, the salient feature, added to the Principal Register in 2013 based on a showing of acquired distinctiveness, extends along the length of the frozen confection, notably twisting around the pop as it goes.

Absurdist: Nacho^®

Jazz has been called (by Whitney Balliett) the sound of surprise, which might be a good way to think about distinctiveness. Occasionally, incongruity itself can be a meaningful means of capturing attention. If, based on the context, you are able to anticipate what’s coming next, there’s a good chance you won’t really even notice it, whereas if the context (e.g., frozen confectionary) leads you to expect one kind of thing (crossed over curl tops, tiny second scoops, etc.) but you encounter something very different (e.g., an inexplicable amalgam of tasty frozen treats and tacos), there’s a very good chance you’ll take note, as you might with Nacho^® (see fig. 5).

It’s not clear from USPTO records how long this mark, registered on the Supplemental Register in 2003 and again in 2009, has been in use, but it does appear that few other frozen confections resemble it. As such, it seems a natural candidate for the Supplemental Register. Many people denigrate the Supplemental Register, often (in my opinion, unfairly) characterizing it, basically, as the rejects bin. But registration on the Supplemental Register requires that a mark be capable of distinguishing the source of goods or services, which can still be a relatively high bar (at least compared to copyrights and patents). In the case of trade dress marks, instead of thinking of the Supplemental Register as the rejects bin, perhaps a more apt analogy would be to starting Off-Broadway.

Reinventing the Aesthetic: Dippin’ Dots^®

Finally (and not for the faint of heart), one method for getting people’s attention is boldly to go where no one has gone before; basically, to reinvent what it means to be in your category. This appears to be what’s happened in the case of Dippin’ Dots (see fig. 6).

Here, rather than making mere modifications to the shape of traditional frozen confections, the owner decided to venture off into entirely unknown territory, reinventing the very form of the goods themselves. Since the goods are brightly colored, and (to my knowledge) no other frozen confections looked anything like them at the time of their introduction—according to the registration certificate, the mark was first used in commerce in 1993, and added to the Principal Register based on a showing of acquired distinctiveness in 2003—it would have been easy for consumers to notice them (absolute distinctiveness) and to distinguish them from frozen confections originating from other sources (relative distinctiveness).

Conclusion

As the natural world shows us, in any given context many strategies exist for capturing attention and for standing out from those around you. Trademarks are an opportunity to get noticed and are, professionally speaking, the coolest things in the world. In my opinion, we could be of greater benefit to our clients, and would be truer to the Lanham Act, if we spent more time discerning, discussing, and dissecting distinctiveness.