What is a trademark?

A trademark can be almost anything as long as it helps the consumer identify with the particular product or service.  It can be a word, phrase, symbol, image, sound, device, or even color.  Examples include such marks as the Nike “swoosh,” the NBC three-toned chime “G E C,” and the distinctive shape of a Coca-Cola bottle.

What is the purpose of trademark law?

The purpose of trademark law is twofold:  first, it is to aid the consumer in differentiating among competing products and second, it is to protect the producer's investment in reputation.  The U.S. Supreme Court summed up this purpose nicely in 1995 in the case of Qualitex Co. v. Jacobson Products Co.:

"[T]rademark law, by preventing others from copying a source-identifying mark, 'reduce[s] the customer's cost's of shopping and making purchasing decisions,' for it quickly and easily assures a potential customer that … the item with this mark … is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation related rewards associated with a desirable product."

What do trademarks protect?

The heart of trademark protection revolves around protecting consumers from being mislead.  Imparting source and producer identifying cues, a trademark provides the consumer with the means to make judgments concerning the goods before sampling them.  For example, when a consumer sees a Mercedes-Benz automobile, the trademark name "Mercedes-Benz" conveys a level of quality regarding the automobile. 

What type of protection is given to trademarks?

Trademark protection is not one size fits all but instead the protection is distributed across a scale of four levels with level four receiving the highest protection.  The degree of protection is generally correlated to the degree of distinctiveness. 

1. Generic – generic or common descriptions receive no protection under the law of trademarks. 
2. Descriptive – descriptive terms, because they are not inherently distinctive, are not generally given trademark protection unless a secondary meaning due to the public association of the mark with the holder's product or service can be proven.  Such secondary meanings can be found when a significant number of consumers and other companies associate the mark with the specific product or service. 
3. Suggestive – suggestive terms automatically receive protection even when there is no secondary meaning if the term implies something without actually describing it. 
4. Arbitrary or fanciful – arbitrary and fanciful terms are closely related in that they both are inherently distinctive and receive the highest degree of protection.  Arbitrary marks have real words that are meaningless with respect to the product or service while fanciful marks are completely made up words. 

How are trademark rights earned?

The key word in this question is “earned.”  Trademarks are not born; rather, they must be earned.  By using a mark in connection with a good or service, the user acquires some trademark rights.  Interestingly, though trademarks are protected under both state and federal law, you do not have to register a trademark in order to have it protected (there are advantages to doing so which will be discussed below). 

How do I decide upon a trademark?

There are basically two steps in deciding upon a trademark.  The first involves finding a mark that you want the public to see and identify with your product and that is inherently distinctive.  As noted above, inherently distinctive marks are given automatic trademark protection.  The second step is to conduct a trademark search to be sure that you are the first to use the mark. 

What is trademark searching?

While the first step in deciding upon a trademark is finding terms which are inherently distinctive, conducting a trademark search is an essential second step that must be performed before deciding on a mark for a good or service.  The searcher looks for marks which are either the same mark or a confusingly similar mark.  The confusingly similar standard is a legal standard and a trademark attorney can help to decode such results of the search.  The search for other existing marks is so important because marks are granted on a first come basis.  Further, if you do not conduct an adequate search, you run the risk of infringing on another’s trademark!  In addition to defending an unnecessary lawsuit, you may be required to change your mark, destroy your inventory, or pay significant licensing fees.

Ideally a complete trademark search will be conducted by a professional organization that will search state and federal trademark applications and registrations as well as other non-registered resources like business directories, company names, and internet domain names.  However, it is possible to winnow a list of potential marks by conducting a simple internet or trade directory search. 

Why should I register my trademark?

In order to receive trademark protection, a trademark holder is not required to register.  However, registration of the mark with the USPTO does afford a number of advantages.  Such advantages include:

• the exclusive nationwide ownership of the mark;
• the refusal by the Trademark Office to register close variations of the mark used in connection with similar goods or services by others;
• the right to use the symbol ® to denote the registered status;
• the right to have the mark become "incontestable" after five years of continuous use from the date of registration; and
• the act of putting other later users on notice by way of the public registration. In so doing, the mark will be presumed by law to be known by everyone, rendering the "good faith" use defense unavailable.

Can I register if I am not yet ready to use the mark?

The short answer is yes.  You can file an "intent-to-use" application if you have chosen a mark but are not yet prepared to put it to use. An intent-to-use application is granted for six months and will temporarily grant you the benefits of trademark ownership.

How long does registration last?

Federal trademark registration lasts for ten years but unlike patents, can be renewed periodically to provide indefinite protection into the future.  Of course, you can also lose the rights to a mark as is discussed below.

Do I need to register my trademark internationally?

You should register your trademark in every country in which you anticipate a need for protection.  Importantly, there are differences between US trademark law and that of many foreign countries.  In the US, we grant trademark protection to the first person to use the inherently distinctive mark.  However, in all other countries, the first person to apply for registration of a mark is granted the trademark. 

What is Trademark Infringement?

A potential for trademark infringement exist when the holder of one trademark claims that another is using a confusingly similar mark.  To bring a successful claim, the holder must prove in court that the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake, and/or deception with the consuming public. 

In deciding on whether the infringing mark creates confusion for the consuming public, courts often look at the following factors:

1. the similarity in the overall impression created by the two marks;
2. the similarities of the goods and services involved;
3. the strength of the plaintiff's mark;
4. any evidence of actual confusion by consumers;
5. the intent of the defendant in adopting its mark;
6. the physical proximity of the goods in the retail marketplace;
7. the degree of care likely to be exercised by the consumer; and
8. the likelihood of expansion of the product lines.

In every trademark infringement action, courts will always look at the first five of these factors while the last three factors are the most common additional factors considered. 

If a trademark holder wins a trademark infringement suit, the most common remedy is injunction against further infringement. However, attorney’s fees are available if the mark is federally registered and monetary damages are available under the Lanham act but are rarely awarded. 

What is Trademark Dilution?

Trademark dilution refers to the weakening of a mark through unauthorized use.  Congress responded to trademark dilution by creating a federal trademark dilution statute under 15 U.S.C. 1125(c).  Trademark dilution under this statute differs from trademark infringement in that the dilution statute only applies to “famous” marks and that the dilution statute requires neither likelihood of confusion, nor competition between the parties.  Indeed, the trademark dilution statute even includes satires and parodies in commercials or advertisements when there is no likelihood of confusion. 

Can I lose my trademark?

Loss through usage:

Once you have a trademark, your rights are unfortunately not necessarily static.  The rights to the mark remain pegged to the degree of distinctiveness at a given time.  This is to say that though at one time a mark may have been inherently distinct, over time, it can lose its distinctive nature and become merely generic.  These events occur due to misuse of the mark over time.  For example, at one time aspirin, cellophane, and elevator were all trademarks afforded protection under federal laws.  However, over time due to improper use, the marks slipped into the public domain. 

In this way, it is important to think of trademarks as adjectives and not has nouns.  When a trademark holder uses his mark, it should be along with a generic term.  He should ask for a Xerox photocopy not a Xerox or for a pair of Nike shoes not for a pair of Nikes.

Thus, it is essential to monitor and indeed police the use of your mark within your own organization but especially within the public.  This may require you to educate the public as to the mark’s proper uses but may also require you to initiate legal action. 

Loss through non-usage:

The USPTO has a policy that favors trademark use. If you fail to use the mark in business for two or more years, you may be presumed to have abandoned your mark and thus lose ownership and its benefits.