The policy behind trademark law is to reward owners who are able to provide a consumer with a mark that sufficienly and reliably serves as an indicator for the source of a product or services characteristics or quality. Two doctrines that ensure that this policy behind service or trademark law is protected are the genericness and distinctiveness doctrine.
A mark that becomes generic for the product or service provided under it often loses legal protection. For example, kleenex is sometimes considered to be a generic term for tissues. Often how a trademark owner uses a mark in advertising campaigns and to promote its product or service may lead to a genericness problem. See, Trademark Manual of Examining Procedure (TMEP) 1209.01 (c).
The descriptiveness doctrine, prevents an individual from obtaining trademark protection for a term that describes the product or service sold under it. For example, “Suits for You”, for a company that provides suits may have difficulty obtaining trademark protection, because it describes that the company is going to provide suits. Without demonstrating a secondary meaning the “Suits for You” trademark may be rejected for a descriptiveness problem. See. TMEP 1209.01 (b).
It is important for entrepreneurs, family businesses, individuals, small and mid-size companies to take these doctrines into consideration in developing the appropriate advertising and branding strategies. Consulting a trademark attorney in selecting a mark and developing a branding strategey can help overcome these potential obstacles to obtaining trademark protection. These are just two of the many basis that the USPTO will consider in performing a substantive examination of a trademark application.