Trademark Fundamentals

What is a Trademark?

A trademark is essentially a brand. It is a word, logo, slogan, package design, or other source indicator for a particular product or service (in which case it is a service mark). Trademarks and service marks (collectively “Trademarks”) promise a consistent level of quality, whether it be good or bad. OREO® is a trademark for cookies; the design of a leaping deer is a logo for heavy construction equipment; HAVE IT YOUR WAY® is a slogan for hamburgers; and the Coca-Cola bottle is a package design mark (called “trade dress”) for cola. The main purpose of a trademark is to identify the source of a product, and to distinguish that product from products that come from other sources. For example, a trademark will help you choose between a COKE® and a PEPSI®.

As noted above, marks can also be used to identify and distinguish a service. USC® when used in connection with educational services is an example of a service mark. While such marks are technically called “service marks,” it is common for service marks to also be referred to as “trademarks” for convenience sake.

Other Types of Intellectual Property Often Confused with Trademarks

Trademarks, patents, and copyrights are all forms of intellectual property because they are created as a result of intellectual effort. Nevertheless, they are quite different from one another.

  • Trademark: As discussed above, a trademark concerns symbols, words, and designs that are applied to products or used in connection with services to identify the source of a product or service.
  • Patent: A patent protects a new and useful idea or invention, or an improvement to an existing invention. There are various types of patents, such as utility patents, design patents, and plant patents.
  • Copyright: A copyright protects the original way in which an idea is expressed, but does not protect the idea itself. The subject matter of a copyright must be an original literary, artistic, or musical work that is fixed in a tangible medium, such as a book, play, dance, painting, sculpture, print, movie, video, or sound recording. Please note that a copyright exists once the work itself has been fixed in a tangible medium. Registration provides benefits, but is not required.

Selecting a Trademark

When selecting a trademark, it is important to keep in mind that the more distinctive a trademark is, and the more well-known it becomes, the wider the scope of protection will be for the mark. Trademarks can be categorized along a continuum that ranges from marks that are highly distinctive (and generally have the broadest protection) to marks that are generic (and have no protection at all).

  • Fanciful or Coined Marks: These are completely made up words that have no built-in meaning. Examples of fanciful or coined marks include XEROX® for reprographic products and KODAK® for cameras and film. Such marks are generally the strongest marks because they are made-up words, so it is difficult for competitors to claim that they accidentally adopted the same trademark.
  • Arbitrary Marks: These are existing words that have no relation to the products or services. Examples of arbitrary marks are APPLE® for computers and BABY RUTH® for candy bars.
  • Suggestive Marks: These are words that suggest an attribute or quality of the products or services, but do not describe the products or services themselves. Examples of suggestive marks are CATERPILLAR® for tractors and WHIRLPOOL® for washing machines.
  • Descriptive Marks: These are words that describe the products or services, or describe a characteristic of the products or services. Also included in this group are laudatory words, geographically descriptive terms, and surnames. Examples of descriptive marks include RAISIN BRAN® for cereal (descriptive of the product itself), GOLD MEDAL® for flour (laudatory), BANK OF TEXAS® for a bank in Texas (geographically descriptive), and GALLO® for wine (surname). Such marks generally have the narrowest scope of protection, and will often be refused registration unless the owner can show the mark have become distinctive of the owner’s goods and services. Also, please note that merely misspelling a descriptive or generic mark will not render it distinctive.
  • Generic Marks: Generic wording for the product or service (such as BREAD for bread and CAR WASH for a car wash), cannot be protected as a trademark because the generic wording describes a whole group of goods or services. Such terms cannot distinguish one product or service within the group from another or provide any indication of source. Moreover, competitors should not be precluded from using the same generic wording to describe their own products. Please note, however, that it as acceptable for a trademark to include some generic wording (as in GOT MILK?® to promote milk), provided any exclusive right to use the generic wording is disclaimed.

After selecting a mark, it is important to have an attorney run a search to determine whether or not the mark is available and/or worthy of trademark protection.

Establishing Rights in a Mark

In the United States, trademark rights are established in one of two ways: (1) You can start using the mark, in which case you establish common law rights in the geographic areas where the mark is used; or (2) you can apply for federal registration based on existing use or based on having a bona fide intention to use the mark in interstate commerce. While a federal registration will not issue until use of the mark in interstate commerce is established, filing an application before use, provided you have a bona fide intention to use the mark, essentially reserves the name while the product or service is being developed.

Benefits of Registration

Benefits to federally registering a mark include:

  • Nationwide priority rights from the date the application is filed;
  • Constructive notice nationwide of the trademark owner’s claim of ownership;
  • Presumptive evidence of the validity of the registration and ownership of the mark, and of the owner’s exclusive right to use the mark on or in connection with the goods or services set forth in the registration; and
  • Federal jurisdiction over claims of infringement, counterfeiting, and other unfair competition claims.

What Should Not Be Registered?

Keep in mind that you do not have to register a mark to use it. In fact, rights accrue through use. While there are many benefits to registering a mark, as noted above, trademark registration is a lengthy and sometimes costly process, and it is not appropriate in all circumstances. Marks that are used for only a short period of time, such as marks adopted for short-term promotions, should not be registered. In addition, marks that are only used locally should not be federally registered (although state registration may be appropriate in this case). Finally, applicants should not apply to register marks that are not well-conceived, because once the application is filed, there is no changing the mark.

How Can You Lose Your Rights In Your Mark?

Often trademark owners will stop using a particular mark or set of marks without any intention to resume use. However, there are also ways to lose a mark unintentionally. One way is to license the mark to others without controlling the quality of the licensee’s goods or services. Another way is to misuse the mark, or fail to police the mark, so that it ceases to indicate source. Proper use includes (1) using the mark as an adjective rather than a noun or verb; (2) using the mark distinctively; (3) affixing the mark to goods and services; (4) using the proper trademark notice (® or Reg. U.S. Pat. & Tm. Off.) in a visible way; and (5) licensing the mark with care. Failure to properly use and police your marks can result in your mark becoming “genericized.” Examples of former trademarks that became generic terms as a result of improper use include “aspirin,” “escalator,” and “zipper.”

Trademark Maintenance

A federal registration remains the owner’s property forever provided the owner continues to use the mark for the goods and services set forth in the registration. (Marks that are not in use become vulnerable to cancellation by third parties.) In addition, trademark owners must make periodic filings with the U.S. Patent and Trademark Office (“PTO”) to keep their registrations in full force. An affidavit of continued use must be filed between the fifth and sixth year after registration, and it must be accompanied by a current specimen showing commercial use of the mark. In addition, registrations must be renewed with the PTO every ten years. Renewals likewise must be accompanied by current specimens showing commercial use of the mark. In addition, it is recommended that a declaration of incontestability be filed with the PTO sometime after the fifth year of registration. Such a declaration makes it difficult for third parties to cancel a registration (absent a showing of abandonment or fraud).