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Trademarks What is a Trademark?

A trademark is a symbol, picture, word or phrase that a seller or manufacturer uses to distinguish a product or service from that of a competitor. Technically, marks used to identify specific services are known as service marks, but they are treated the same as trademarks under the law. In certain situation, trademark protection can be include more than just the symbols or phrases associated with a product, but can include such things as color or shape. To obtain trademark protection, you must file an application with the U.S. Patent and Trademark Office.

Applying for a Trademark

Trademark registration is governed by a federal statute known as the Lanham Act. To obtain trademark protection, you must file an application with the Patent and Trademark Office. As a part of the application, you must either show how you have used the mark in commerce, or that you plan to use the mark in the future. You cannot register a mark that you don’t plan to use, simply to prevent others from using it.

Your trademark application will be reviewed by an examiner. If it is approved, it will be posted in the Trademark Official Gazette, so that all potentially interested parties can be put on notice, and can file an objection, if appropriate. The Patent and Trademark Office also has an appeals process if your application is rejected.

Avoiding the Likelihood of Confusion

The principal objective of trademark law is to protect the goodwill of a business by minimizing or avoiding the likelihood of confusion with similar products or services. To that end, trademarks are generally limited in scope to the types of products the trademark owner sells, manufactures or markets. For example, a trademark holder who sells kitchen appliances will probably not have an infringement claim against someone using a similar mark to sell speedboats, as there is little or no likelihood that the public would expect that the goods were from the same source.

The Requirements to Obtain Trademark Protection

As a general rule, to qualify for trademark protection, a mark needs to be distinctive, i.e., there must be a way that the mark can be used to identify the origin of the goods or services. A mark may meet the test for registration if it is “inherently distinct,” or if the party seeking trademark protection has taken steps to give the mark “secondary meaning,” such that it is commonly associated with a specific product or service.

Certain types of marks are considered to be inherently distinct, and are generally given a high degree of protection. An “arbitrary or fanciful” mark, i.e., one that has no logical or rational association to the underlying product, is typically the strongest type of mark.

  • A fanciful mark is one that is simply made up—the word or term does not exist apart from the product. Examples include Polaroid or Zagnut.
  • An arbitrary mark involves the use of a common word, the meaning of which has no relationship with the product or serve. Examples include Apple Records or Sun Microsystems

“Suggestive” marks imply a characteristic or qualify of the goods or services—examples include Greyhound, 7-Eleven (suggesting the hours of operation) or Blu-ray. A suggestive mark is typically considered to be inherently distinct.

So-called “descriptive” marks are ones that do just that—describe the product in some way, such as function, smell, color, dimensions or ingredients. Examples including All Bran, World Book Encyclopedias or Vision Center. A descriptive mark is not considered to be inherently distinct, as it merely describes the good or service, and could be used to describe all similar goods or services. As a consequence, for a descriptive term to be eligible for trademark, it must have acquired “secondary meaning.” In other words, because of advertising or the success of the product, the consuming public associates the mark with a specific source. The Club, the anti-theft device for motor vehicles, is a classic example of a descriptive term (the product looks like a billy club) that acquired secondary meaning through extensive marketing and advertising. Factors the Trademark Office and the courts will typically consider to establish secondary meaning include:

  • The amount and manner of advertising
  • The volume of sales
  • The length and manner of the trademark’s use
  • The results of consumer surveys regarding recognition of the mark

A “generic” mark is a mark that is used to describe all similar products or services. A generic mark is customarily not entitled to any protection. A mark that qualifies for trademark protection can lose that protection if the mark comes to be used generically to describe all similar products. Products such as Kleenex, Xerox and Rollerblade are (or were) originally trademarks. To ensure against such a loss of trademark, most trademark owners will specifically state on the product that it is a registered trademark.

Remedies for Trademark Violation

If your trademark was infringed, you may seek injunctive relief, where the court issues an order that all infringing use of your mark immediately cease and desist. You can also pursue monetary damages, including the infringing party’s profits, any economic losses you have suffered, and the costs of filing your lawsuit.

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