Trademarks

TRADEMARK PRIMER
©2009 Dennis Donahue

What is a trademark?

Trademarks, service marks and trade names (frequently referred to as "marks") are used to distinguish one company's goods or services from those of others. Trademarks and service marks identify products and services, respectively, and a trade name is used to identify a business. Marks usually consist of a series of words or a logo, but may also take the form of any item that is capable of distinguishing goods or services, such as color patterns, scents, packaging, or a productís design (to the extent the design is distinctive and not functional). Marks are personal property that can be owned, purchased, sold, licensed, or used as collateral.

There are three primary rights to consider concerning trademarks:

the right to use a particular mark

the right to prevent others from using the mark

the right to register the mark.

The first right depends on the similarity of the mark to marks used by others. The last two rights depend in large measure on the "distinctiveness"of the mark.

What type of Trademark does my business have? Am I protected?

Trademark law has traditionally measured the relative distinctiveness of a mark by placing it into one of four different categories depending on the relationship between the mark and the goods or services with which it is associated: generic marks, descriptive marks, suggestive marks and arbitrary/fanciful marks. The particular category in which a given mark is placed can determine whether the mark's owner can prevent others from using the mark or register the mark.

     Generic marks are terms that denote the basic nature or the distinguishing feature of the associated good or service. Such a "mark" is not entitled to exclusive rights if it generically identifies the good or service, such that all parties are free to use the term to accurately describe their goods or services. A mark can either be generic upon adoption or become generic by common usage. SHOE WAREHOUSE is an example of a mark that courts have found to be generic.   ASPIRIN is a good example of a mark that became generic through unrestricted use.

     Descriptive marks describe the nature, quality or intended use of associated goods or services. Descriptive marks are not initially eligible for trademark protection based on the policy that competitors should be able to use descriptive terms to describe their goods or services. The existence of alternative words to describe a good or service does not affect this result. For example, SPICY SAUCE used for salsa. However, a descriptive mark will become eligible for trademark protection if the owner of the mark develops "secondary meaning" such as through long and extensive use and promotion. Secondary meaning indicates that the purchasing public has begun to associate the descriptive mark with a single producer or source of the particular good or service, namely the mark owner. An example is ARCH PRESERVER for insoles.

    Suggestive marks suggest some aspect of the goods or services. The distinction between descriptive and suggestive marks can be quite subtle. A mark is considered suggestive rather than descriptive if it requires imagination, thought or perception to identify the descriptive nature of the mark.   An example: TRACKER for all terrain vehicles. In comparison, a descriptive mark conveys an immediate idea of the nature, qualities or characteristics of the goods or services. In contrast to descriptive marks, suggestive marks can be protected and registered without the need for establishing secondary meaning.

     Arbitrary marks have no apparent relationship to the associated goods or services, and fanciful marks are contrived words with no fixed meaning. These are the most distinctive marks and are accorded the greatest deference and protection. Examples of arbitrary and fanciful marks include KODAK for photographic film, CLOROX for bleach, SANKA for coffee, CAMEL for cigarettes, SHELL for gasoline, or APPLE for computers.

Choosing and protecting the best mark possible:

When selecting a new trademark, service mark or trade name, select a distinctive mark that is not at all descriptive of the actual goods or services that are sold under the mark. In the process of selecting a distinctive mark, conduct an availability search to ensure that the mark is not already being used for similar products &/or services or by a particular competitor. The availability search is important because, if the selected mark is found to be the same as or "confusingly similar" to a mark that has already been in use by another party, the new user of that mark may be found liable for trademark infringement. A court then order you to to stop using that mark. Switching to another mark under such circumstances almost always requires significant time and expense, along with the potential loss of brand recognition.

There are several different search options that range in complexity and cost. While it would be prohibitively expensive to search every conceivable listing of a potentially conflicting mark, such as all government registries of marks along with directories and other catalogs showing marks being used, even a basic search of marks that are registered and pending in the U.S. Patent & Trademark Office can greatly reduce the risk involved in adopting a new mark, especially if such a Federal mark search is combined with an internet search. A more extensive availability search includes Federal marks and state marks, and may include other collection of common law marks in addition to those found on the internet. A comprehensive search could investigate pertinent business and trade directories, advertising outlets, and other relevant references.

Do I need to register my "mark"?

Establishing common law ownership of a distinctive mark merely requires that it be adopted and used in connection with the sale of goods or services. Even a single, legitimate, public use of a mark can be sufficient to establish common law ownership of the mark. Trademark rights continue indefinitely as long as the mark owner does not abandon the mark. In the United States, common law protection of trademarks, service marks and trade names is generally limited to those geographic areas where the mark is actually used.

     Therefore, the first user of a mark in a particular geographic area is protected from some else trying to use it for themselves in that same area. However, that other business may be able to acquire concurrent, common law rights to the unregistered mark in a another geographic area where the first user has not yet used the mark.
     The holder of a Common law trademark also cannot stop another business from using that mark outside their area for goods or services that are completely unrelated to the owner's own goods or services, or in comparative advertising.

     Federal registration grants significant benefits and protections beyond a common law mark:

Serves as constructive notice of the registrant's claim to a mark.
Reserves the exclusive right to use the mark throughout the entire United States.
Protects the registered mark regardless of whether the registrant has actually used the mark in a particular area. (This assumes that a subsequent user has not begun using the mark in that area prior to the registrantís application for registration.)
Entitles the registrant to enforce the mark in federal court, provides a presumption of the registrant's ownership of the mark and of the registrant's right to use the mark.
Makes it easier for the registrant to enforce rights to the mark, and entitles the registrant to enlist the aid of the U.S. Customs Service to exclude or, in some circumstances, seize infringing imports.

To obtain a federal registration, an application for registration must be filed with the U.S. Patent and Trademark Office (USPTO). A fee for each class of goods or services for which the applicant wishes to claim the use of the mark must be submitted with the application. Due to the complexity of the rules and regulations applicable to applications for federal registration, a mark owner should consult with an experienced trademark attorney when considering whether to file such an application. That attorney should also be prepared to help clients navigate the application processes for international protection.

Using a mark properly:

Registered or not, a mark must be used properly in order to keep it's owner from losing rights to the mark. Here are some tips for the proper display and use of a mark:

First, marks should be clearly identified.
Unregistered trademarks should be identified with the symbol TM .
Unregistered service marks should be identified with the symbol SM.
Federally registered marks should be identified with the ® symbol.
Preferably, a trademark or service mark should be used as an adjective in conjunction with a generic name for the product or service and not as the name of the product or service. For example, it is proper to write, "Buy an ACME widget" rather than "Buy an ACME."
The word "brand" can be used to draw attention to the trademark or service. For example, "Ask for ACME brand widgets" is even safer.
Do not allow others to use the mark without controlling the nature and quality of the goods or services offered.

Again, an experienced trademark attorney will be able to provide further advice on proper usage of trademarks and service marks and assist in implementing a program that will help to ensure that your trademark/service mark rights are sufficiently protected.