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Trademarks

What is a trademark and why should your business have one?  A trademark or service mark Is a word, phrase symbol or design (mark) that identifies and distinguishes the source of the goods from the goods of another.  Both trademarks and service marks are commonly referred to as trademarks. 

How Do Trademark Rights Arise?

The rights in trademarks come from actual “use” therefore a trademark can last forever, so long as you continue to use the mark in commerce, and specific documents are filed at designated timelines and the associated fees paid.  Priority of trademark rights are determined by the first to use, not the first to file. In general, the first to use a trademark in the ordinary course of business will have priority over a later user of the same or similar mark for the same or similar goods or services. The use cannot be merely to reserve a right in a mark.  However, the United States Trademark Office does allow “intent to use” applications for business owners who want to protect their products or services prior to launching their business. 

What Product/Services are Eligible for Trademark Protection?

Trademark protection covers numerous categories, including business name, business logo, t-shirt brand, signature event title, stage name, blog/podcast title, app name, slogan/tagline, catchphrase, the title of book series, product name, nonprofit name, program title.   Content that is not subject to trademark protection includes ideas, concepts, methods, systems, inventions, names of songs, names of a single creative work, T-shirt designs, ornamental designs, (just a design on a shirt) generic words/phrases, widely used messages. 

Benefits of Trademark Registration: 

A registered trademark provides nationwide notice of ownership of the mark and is protected throughout the entire U.S., its territories and possession and grants the use of the ® (trademark symbol). Trademark registration also protects against possible infringement of not only identical marks but also confusingly similar marks.   An officially registered trademark serves as evidence of the valid and exclusive ownership of the mark; discourages others from using confusingly similar marks; stops trademark infringing imports at the U.S. border, prevents the “good faith” defense, and makes for stronger cease and desist letters against possible infringers. Finally, an officially registered trademark also makes your business more valuable. 

Levels of trademark protection:  From Weakest to Strongest.

  1. Generic- describes or represents the product or service as a whole. Generic marks generally are not eligible for trademark protection.  (e.g. The “salon” for beauty parlor)
  2. Descriptive – Immediately conveys the nature of the product or service,  for example, “Cheesy Pies” for a pizza shop.  A descriptive mark is only eligible for trademark protection if the mark has acquired secondary meaning.  Secondary meaning is acquired when a trademark is continuously and exclusively for a period of five years. 

 

 Note: In some jurisdictions, surnames are treated as descriptive marks. However, what is initially a descriptive word may later become protectable as a trademark if it acquires secondary meaning. In other words, if a descriptive word is used and advertised exclusively as a trademark for a sufficient period of time, it may, in addition to having the primary meaning that is descriptive of the product, come to identify the mark as being associated with a single source of origin for that product.  Examples of descriptive words that have acquired a secondary meaning and become protectable as trademarks are SHARP for televisions and HOLIDAY INN for hotel services.

  1. Suggestive- A suggestive mark requires some measure of imagination to reach a conclusion about the nature of the product or service. Hints at a product or service without actually describing it. Suggestive marks have a relationship to the product or service. (e.g.)“Peguin” for refrigerators. Netflix for streaming services. (have meaningful, but less extensive protection. 
  2. Arbitrary- a word in the English language, but no connection to the product or service. An arbitrary mark has very strong trademark protection. In other words, an arbitrary mark may be a known word used in an unexpected or arbitrary way. (e.g. Apple for
    computers, Dove for Chocolates, Amazon for retail services)
  3. Fanciful- Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark.  (e.g. Pepsi, Kodak, Spotify, Google)

Note: , in the beginning, a bigger effort in terms of advertising is necessary in order to educate the public as to the relationship between the invented word and the owner’s product or service. However, these marks enjoy the broadest scope of protection against third-party use. This is also true to some degree for arbitrary marks

The strongest trademarks typically fall in the suggestive, arbitrary, or fanciful categories.  It is best to choose a brand or business name that falls into those categories to increase your chances of registration. 

Disclaimer: The contents of this post are for informational purposes only and may not be relied on as legal advice.