The Truth About Trademarks by Timothy B. McCormack Attorney at Law

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The Truth About Trademarks by Timothy B. McCormack Attorney at Law

A “trademark" or “service mark" can be made up of any word, name, symbol, logo, color, sound, or product shape or any combination of these elements. Typically, a trademark is used to mark goods. Alternatively, a service mark is used when selling services. This article refers to trademarks and service marks synonymously.

A trade name, which is similar to a trademark, merely represents the name of a company. Similarly, a domain name is part of a unique address that identifies a particular web site on the Internet. Typically, trademarks trump trade names and domain names and, therefore, registering one’s trade name with the state is not good enough to protect rights in the name. The same is true of domain names.

Protecting One’s Marks

Generally speaking, trademarks can be protected in four different ways. First, trademarks can be nationally registered through the United States Patent and Trademark Office. Second, trademarks can be registered on a state-by-state basis. Third, trademarks can be protected within specific geographic areas under the common law of particular states. Fourth, trademarks can be protected internationally. As an aside, charitable groups, non-profit corporations, professional and fraternal groups and educational and religious institutions receive the same protection against confusing use of trademarks and corporate names as for-profit business organizations.

The benefits of federal trademark registration are immense. Some of the advantages are:

  1. One registration covers fifty states; 2. One can use the ® symbol with one’s mark; 3. Once a federal registration is filed any common law rights being Developed by competitors are stopped dead; 4. Federal trademark registrations add value to a company’s intangible asset portfolio; 5. Tactical and substantive advantages in domain name disputes are gained; 6. One gets international priority in many foreign countries when filing for additional trademark registrations; 7. Court ordered damages can sometimes be tripled for federally registered trademarks; 8. The federal court system can be used to stop infringement of one’s marks; 9. A federal trademark registration can be entered into evidence in court to prove your trademark is valid and that you own the mark; 10. One gains potential future revenue from trademark licensing; 11. The United States Customs Service can be asked to stop goods marked with infringing trademarks from entering the United States; and 12. The registered mark will show up prominently in other people’s trademark clearance searches (including the searches conducted by the Patent and Trademark Office) making it less likely that other businesses will chose to use your mark.

Importance of Trademark Searching And Clearance

Before a company invests substantial money on advertising, business cards, store signs, customer recognition, etc. a comprehensive trademark search should be conducted and reviewed. A comprehensive trademark search will typically examine marks on the Federal Registry, all fifty state trademark registries, common law sources including business records and newspapers, and Internet sources such as domain name registrations. A comprehensive search will look for marks that are exactly the same as the suggested mark as well as “look alike" and “sound alike" marks. A full trademark search will also consider marks that share common elements with the suggested mark, even if the marks appear quite different.

This is can be important in some cases. A written opinion interpreting the search results in light of legal trends and case law is also a must. In some cases, the process of conducting a trademark search and reviewing the results with a knowledgeable attorney results in a business modifying their mark or identity. In these cases, an ounce of prevention is worth a pound of cure. No one wants to face expensive litigation that results in being forced to change one’s mark, pay damages to the other side, and risk losing one’s customer recognition. In many cases a full trademark search and written opinion results in specific strategies that help mitigate the risks described above. Often these same strategies help in actually getting one’s trademark registered with the Patent and Trademark Office as well.

Choosing A Strong Trademark

Choosing a strong trademark can be one of the most important decisions that a business owner makes. Sometimes businesses are wed to a particular mark — making no other choice available. In these cases it is important to understand the strengths and weaknesses of the mark from a protection and registration standpoint. Understanding one’s mark in this way allows for the appropriate development of registration and protection strategies That can help make a weak mark stronger. The process of understanding the relative strength of an existing trademark is the same as the first step in choosing a new mark from scratch.

Whether one’s mark has been predetermined or not, the first step in “choosing a strong mark" is to figure out where the mark exists on a spectrum of protectability. Trademarks range from very weak and non-registerable to very strong and easily registered. Obviously one end of the spectrum is highly desirable while the other end is much less so.

On the weaker end of the spectrum one finds marks that are classified as “generic." A generic mark is not protectable as a trademark. Use of such a mark is not recommended since anyone could use the same mark in the same way without legal consequence. A generic mark is one that has become so widespread that the consuming public no longer associates it with a particular company. Ironically, owners of some of the most famous marks have had to fight to keep their once unique marks from becoming generic. KLEENEX for tissues and JEEP for small four-wheel drive vehicles are examples of marks that have come dangerously close to becoming generic.

One step up from a generic mark is a group of marks referred to as “descriptive" or “merely descriptive." Descriptive marks are exactly what their name implies – descriptive of particular goods or services. The fictional trademark CANNED GOODS for canned food products would be considered descriptive of canned goods. This mark might also be considered generic. Using the same mark to sell books, however, would be considered arbitrary (which is a good thing, as described later).

The mark TIMCO for a company selling services by someone named Tim might also be considered descriptive. Sometimes descriptive marks can be registered and protected when one can show that the mark has become well known or, in other words, has “acquired distinctiveness." A descriptive mark can often be placed on the supplemental federal registry and after five years it can often be registered as having become “distinctive," and therefore no longer “descriptive." Marks that are merely descriptive of goods and services should be used with caution and avoided when there is a choice. It is also important to note that even a mark that has a weak placement on the trademark spectrum can be considered strong if the mark is widely recognized and has “commercial strength."

One step up from descriptive marks are marks referred to as “suggestive." Many times one can argue that a mark appearing to be descriptive is actually suggestive. A suggestive trademark, while not being the strongest of marks, is registerable. A suggestive mark is one that requires some degree of imagination to associate the mark with the goods and services.

An example of a suggestive mark would be Technology for mechanical parts and computer hardware. The word technology describes the goods (to some extent) but the exact nature of the goods is not clear from the mark alone. Of course, as a practical matter, the further away one gets from generic, descriptive, and suggestive marks the stronger the resulting mark will be.

The best kind of mark one can have is described as “arbitrary or fanciful." An arbitrary mark is made of common words, like “CANNED FOOD," but applied to goods and services where there is no rational connection between the goods and the mark (like CANNED FOOD for the sale of paperback books). In an etymological sense, the association between the goods and the mark is “arbitrary."

A fanciful mark is one that has no current existence in our lexicon (it is simply “made up.") Obviously, one’s intellectual property rights will be the strongest in marks that did not exist before they were “invented." So, whether one has a mark or is thinking of a new mark, try to conceptualize where on the generic-descriptive-suggestive-arbitrary-fanciful spectrum the mark might fall. The further away from fanciful one getsthe more important it will be to consult a trademark attorney about trademark searches, trademark registrations and, in some cases, trademark and/or advertising insurance.

Conclusion

A trademark can be almost anything, including words, logos, colors, and sounds. The benefits of properly protecting one’s trademark rights are huge. All businesses should protect their trademarks (advise your clients: “don’t get caught with your pants down"). In the United States federal trademark protection is the best. It is recommended that a trademark search and written opinion interpreting the same be prepared for all businesses with important trademarks.

Additional Resources

U.S. Patent & Trademark Office Rules of Practice and Federal Statutes (Trademarks) Trademark Manual of Examining Procedure Trademark Registration of Internet Domain Names TTAB Manual of Procedure Trademark Electronic Search System (TESS) P.L. 105-330, Trademark Law Treaty Implementation Act (Oct. 30, 1998) P.L. 106-43, Trademark Amendments Act of 1999 (Aug. 5, 1999)

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