This guide will inform the reader as to the general nature of a trademark, how to identify and choose one, how to acquire protection in a trademark and identify some issues to watch for in protecting a trademark once acquired.
What is a Trademark?
A trademark is something that is used in commerce that distinguishes the goods or products of one manufacturer or seller from another manufacturer or seller and indicates the source of the goods or products. A trademark can be a word, symbol, name, color, phrase, design, or even a tone or series of musical notes. To be protectable, a trademark must be used in commerce and must be distinctive or have acquired what is known as "secondary meaning". Famous trademarks include Google, the golden arches of McDonald's, the Apple apple, the Nike swoosh, the name Ford, and Coca-Cola, just to name a few. There are literally millions of trademarks in use today.
How is a Trademark Useful?
Trademarks are powerful and valuable intellectual property. Famous trademarks can be worth million and sometimes billions of dollars. Trademarks are used by companies to distinguish their goods and products from the goods and products of competitors. Consumers can tell the goods or products they like and are loyal to by identifying the trademark on the products and products' packaging. Because trademarks can be so valuable, companies spend considerable time and effort to promote and protect their trademarks.
How to Choose a Trademark?
In order to be protectable, a trademark must be distinctive or take on "secondary meaning". Some trademarks are inherently distinctive while others are not. The most distinctive (strongest) trademarks are fanciful or coined marks. Next on the distinctiveness scale comes arbitrary marks, followed by suggestive marks, and finally descriptive marks. Generic words that describe an entire category of goods or products cannot obtain trademark status or protection. At the strong end of the spectrum, creating an arbitrary mark can give you instant trademark protection once used in commerce. At the weak end of the spectrum, choosing a descriptive mark will take years and marketing dollars for it to acquire secondary meaning and become protectable.
The Trademark Distinctiveness Spectrum
Fanciful or Coined Marks: These are the strongest trademarks. A fanciful or coined mark is a series of letters that has no inherent or understandable meaning other than to identify the goods or products sold by the owner of the trademark. Examples of fanciful or coined marks include GOOGLE, KODAK or EXXON.
Arbitrary Marks: Arbitrary marks are inherently distinctive, but are not as strong as fanciful or coined marks. Arbitrary marks have meaning in everyday life, but the meaning is not associated with the goods or products being sold. Examples of Arbitrary marks are ARROW shirts, APPLE computers, FOX news, and CAMEL cigarettes.
Suggestive Marks: Suggestive marks are weaker than Arbitrary marks, but are stronger than descriptive marks. As the name implies, Suggestive marks suggest a relationship between the name of the mark and the product or goods being sold in commerce. Examples of Suggestive marks are GREYHOUND bus lines, CHICKEN OF THE SEA tuna fish, NETSCAPE internet browser, and COPPERTONE suntan lotion.
Descriptive Marks: Descriptive marks are the inherently weakest marks. Descriptive marks are not protectable until they have acquired what is called "secondary meaning." Secondary meaning is achieved when the marks acquires in the mind of the public a meaning that is not associated with the descriptiveness of the mark, but rather is associated with the source of the goods or products. Examples of descriptive marks that have acquired secondary meaning are HOLIDAY INN, COUNTRY MUSIC ASSOCIATION and INSTANT MESSENGER.
Generic words: When a word describes an entire class of goods or products, it is so inherently descriptive as to never be able to acquire secondary meaning. Examples of generic words that can never be trademarked are CLOCKS, ASPRIN and THERMOS.
Which Trademark to Choose?
The more fanciful or arbitrary your chosen mark is, the easier it will be to protect. The more descriptive the mark, the more difficult it is to protect. The problem is that in business, the marketing people usually want the trademark to be as descriptive as possible to allow the consumer to understand the type of products they are buying. Therefore there will usually be a tension between the marketing people (who want a very descriptive mark) and the lawyers that know that descriptive marks that are not protectable until they acquire secondary meaning after years of use and lots of money.
Should I Conduct a Trademark Search?
Say you have just set up your new company and you want to create a trademark to attach to your new line of products. You will want to do a search to determine whether the trademark you want to use (or a similar trademark) is already being used by another person or company. In that regard, you should recognize that trademark rights are acquired through use in commerce. Thus, if someone is already using the trademark that you want to use (especially for a similar line of products), then they (not you) will have priority to use that trademark and they can stop you from using that trademark and even sue you for damages. Since you are investing lots of time and money into the launch of your new product, you don't want to be told that you must pull your product from store shelves (or off the internet) and remove the offending marks from your product and packaging due to your infringement. It is also important to remember that trademarks do not need to be registered to obtain use rights. Therefore even if the mark is not registered, similar marks with a higher priority to your trademark can still cause you issues. That is why a full, knock out trademark search (one that not only searches for registered trademarks, but also searches for non-registered uses) is a good investment prior to plastering your potential trademark all over your products and packaging.
Should I file for Registration?
In the United States, while you do not need to register your mark in order to gain common law protection, registering your trademark with the Federal Patent and Trademark Office will give you additional protections that you don't acquire from simple use. For example, the benefits of registration include: (i) using the circle R on your products or packaging; (ii) providing constructive notice of your claim of ownership in the mark to the world; (iii) a legal presumption of your ownership in the mark and your exclusive right to use the mark in nationwide commerce in connection with the goods listed in the registration; (iv) a listing on the Patent and Trademark Offices online database; (v) the ability to bring an action in federal court for violation of your trademark; (vi) the ability, under certain conditions, to use your U.S. registration as a basis to obtain registration in foreign countries; and (vii) the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods. Due to these additional protections, it is usually a good idea to register your most valuable trademarks.
When can I use the TM or the circle R ((R)) on my Product or Packaging?
Because trademark rights begin when you use them in commerce, you can attach the TM to your trademark the first time you use it in commerce. This lets the world know that you consider the mark to be a trademark. The circle R can only be used on the product or packaging once it receives registration from the governing authority in the jurisdiction in which you sell your products.
How Do I Get My Trademark Registered?
Outside the United States, many jurisdictions have their own rules and regulations for registering a trademark. If you are seeking to register your mark outside the United States, I highly recommend engaging a qualified trademark attorney to assist you. Within the United States, I also recommend engaging an attorney, but you don't need to. The United States Patent and Trademark Office has created helpful step-by-step instructions that can assist you in filing your own trademark application. Having said that, if you are going to invest tens of thousands and maybe even millions of dollars in marketing and selling products (products that will be defined by your trademark), you might be well served to retain a qualified, trademark attorney to assist you in filing your mark and navigating the sometimes confusing waters that lead to final registration.
How Do I Protect My Trademark?
Once you have identified the trademark you want to use, conducted your searches, used the trademark in commerce, and filed for and obtained registration for your trademark, you cannot simply sit back and think all is well. You must be proactive and take action to protect your trademark. If your marketing people do not use your trademark properly, you may find that you have lost the very trademark protection that you worked so hard to gain. In addition, if your trademark is powerful enough and you decide to license your trademark for others to use, you will need to create special trademark use guidelines and take steps to ensure that your licensees follow such guidelines. Finally, if others are violating your rights in the trademark, you will need to go after those infringers to ensure your trademark is protected and does not become diluted.
Additional resources provided by the author
For more information on trademarks and for instructions on how to file for trademark protection in the United States, visit www.uspto.gov.
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