Trademark Basics

Trademarks Provide Intellectual Property Protection

The umbrella of intellectual property protection includes patents, trademarks, copyrights, and trade secrets. Each has its own source in law and unique protection of various intellectual properties. Trademarks provide value to their owners within the larger umbrella of intellectual property protection. In addition to being one aspect of intellectual property protection, trademarks also are part of a larger area of law called unfair competition.

A Trademark is Valuable to Your Business, Products, and Services

A trademark protects the original or unique characteristic of your product and/or service that distinguishes it from other products or services. A trademark is a symbol of goodwill and identifies the origin of goods and services. A trademark is also a symbol of quality assurance. (Compared to a copyright, which protects an original artistic or literary work of authorship, and compared to a patent, which protects an invention.)

Trademarks Can Be Used in Various Forms

Like a brand name, a trademark allows a consumer to identify your product or service and differentiate it from others. It usually includes a name, symbol, insignia, emblem, logo, phrase, image or a combination of these things. Trademarks can even include colors, sounds, and smells. For example, pink insulation, the NBC chimes, the MGM Studios lion roar, and scented sewing thread are all trademarked. Trademarks can include slogans. For example, “I’m Lovin’ It” (McDonalds), “The Ultimate Driving Experience” (BMW), “Better Ingredients. Better Pizza” (Papa Johns), and “When it absolutely, positively has to be there overnight” (FedEx) are all trademarked. Even numbers can be a trademark, like 7-Eleven.

Trademarks Provide Intellectual Property Protection

A “service mark” is for services; a “trademark” is for goods; a “trade name” is for businesses. Often all three are generally referred to simply as a trademark.

The Circle R ® Symbol Is Only Used When You Have a Federal Registration

A trademark may utilize TM and a service mark may utilize SM without a federal registration. A ® (circle R), however, is reserved only for trademarks and service marks federally registered with the US Patent and Trademark Office (USPTO).

A Trademark Must Be Distinctive

The trademark must distinguish itself from other products and services. Trademarks are categorized by their distinctiveness along a spectrum of generic, descriptive, suggestive, arbitrary, and fanciful. The weakest mark is generic, and the strongest mark is fanciful.

Examples Generic Marks (Avoid)

Some examples of a generic mark are LITE for low-calorie beer, SAFARI for hunting expedition apparel, SUPER GLUE for a strong glue, and CONSUMER ELECTRONICS for a magazine. One can not obtain a federally registered trademark for a generic mark.

Examples Descriptive Marks (Avoid, Unless Secondary Meaning Attained)

Some examples of a descriptive mark are VISION CENTER for eye clinics, ULTIMATE BIKE RACK for a bike rack, AUTO PAGE for an automatic dialing service, HONEY-BAKED for hams, JET for a spray nozzle, ICE for beer, and L.A. for low alcohol beer. One can not obtain a federally registered trademark for a descriptive mark unless it has attained secondary meaning, which means a consumer can identify a particular good with that mark as originating from a single source. Secondary meaning occurs over time through use, sales, and advertising.

Examples Suggestive Marks

Some examples of a suggestive mark are CITIBANK for a bank, CONTACT for drawer paper, Q-TIPS for cotton-tipped swabs, UNCOLA for a non cola beverage, HABITAT for home furnishings, SKINVISIBLE for transparent medical tape, and PHYSICIANS FORMULA for skin cream. Suggestive marks are protected without secondary meaning.

Examples Arbitrary and Fanciful Marks

Arbitrary (applied in an unfamiliar way) and fanciful (coined) marks include, for example: EXXON for gas, XEROX for photocopying equipment, CLOROX for bleach, CAMEL for cigarettes, IVORY for soap, KODAK for film and photography, and ROLEX for watches. Arbitrary and fanciful marks are protected without secondary meaning.

Trademarks Rights Are Acquired by Use

Trademark rights are acquired under state law by use in commerce. However, federally registered trademarks have many procedural, evidentiary, and substantive advantages. For example, only a federally registered mark can utilize the ® (circle R). A federal trademark registration does not expire automatically, as a patent does, but continues so long as the mark is continuously used in commerce and remains distinctive.

Trademark Rights Enable You

Trademark rights enable the owner to prevent others from use of the same or similar mark in a manner that is likely to cause confusion. In selecting a trademark, chose one that is not the same or similar to another that is likely to cause confusion among consumers. For example, if DELTA is used as a trademark for an airline, do not start a new airline and name it Delta. However, in diverse goods and services, such as DELTA for power tools, or DELTA for faucets, a consumer is not likely to be confused by use of the same name, and this is generally permissible.

Trademarks Are Territorial

Trademark rights may be obtained at both state and federal levels in the U.S. Additionally, trademark rights may be obtained abroad on a country-by-country basis.

Trademark Applications Based on Intent to Use the Mark in Commerce

Federal applications can be filed for marks based on “actual use” in commerce or “bona-fide intent to use.” Once the trademark is used, specimens showing the use in commerce must be provided to the USPTO. In many cases a federally registered trademark may be obtained in less than one year from the date of application. Trademarks are generally obtained at a fraction of the cost of obtaining an issued patent.

Is Your Business and Products and/or Services Branded?

Finally, as you consider branding your new business, invention, product line, slogan, etc., consider the value and effect of a federally registered trademark to provide familiarity of your goods and services and distinguish them from the goods and services of others. Consider how a trademark can represent the goodwill of your business and identify the origin and source of your goods and services. Consider how your trademark can become a symbol of quality assurance. We live in a branded society. You are building your brand name. Conceive it, and then protect it.