Mark Smith

Partner

mark@jmsmithlaw.com

They exist all around us. We make eye contact, and we do not even realize it. The instant we enter a store of any kind, they line the shelves. They are present on the very laptop I am typing on right now. In fact, we are surrounded by them throughout our daily lives. They are trademarks.

What Are Trademarks?

Trademarks, as defined by the Lanham Act, are “any word, name, symbol, or device…. to identify and distinguish [a manufacturer’s] goods…from those manufactured or sold by others and to indicate the sources of the goods…” In other words, it identifies the source from which the product originated. It is a way which allows a person to know that the product they are using comes from a specific competitor in the marketplace. This allows consumers to return to the same competitor for the product, if they happen to want more. Trademarks are made with the purpose of guaranteeing the quality of the goods with the mark, and helps establish and maintain a brand for the company and their products.

While patents protect new and useful inventions, and copyrights cover original, expressive works in a tangible medium, the scope of trademarks covers a great deal more. In fact, trademarks cover and protect a wide variety of things. These include: names, symbols, slogans, designs, sounds, colors, smells, and recently, domains. There is more to trademarks than meets the eye. There exist three subcategories in the realm of marks: trade name, trademark, and service mark. A trade name identifies a company or business; whereas a trademark identifies the goods of a company. A service mark identifies the services of a company.

Standing Out From the Competition

In order to be an effective and protected mark, the mark must be distinctive – capable of identifying the source from which it comes. The more unique the mark is, the stronger it is. Distinctiveness is measured on a spectrum which contains five levels: Generic, Descriptive, Suggestive, Arbitrary, and Fanciful.

  1. Generic – This term is normal, and an everyday name of a type of good or service. Names such as carwash, pizza, and toothpaste fall under this category. Generic terms are in fact the exact opposite of trademarks, since they are incapable of serving as an identifier for its source. There is a process known as “genericide”, wherein a well-established trademark can lose its distinctiveness, and become the new generic term for a product. These types of marks are no longer entitled to any form of protection. Former trademarks that have suffered at the hands of genericide include bleach, cola, escalator, thermos, and zipper.
  1. Descriptive – Descriptive marks are those that immediately bring to mind the characteristics, features, and qualities of the product and/or service, such as its composition, functions, ingredients, purpose, and/or use. These kinds of marks are often eligible for a form of limited protection. One example is Vision Center™, where the word “vision” brings eye care services to the mind.
  1. Suggestive – Suggestive marks are words that arouse an attribute or a characteristic of the products or services it represents, but does not describe the products or services themselves. As opposed to a mere descriptive mark, suggestive marks require the consumer to apply their creative ability, in order to associate the word with the product. Coppertone® implies a “copper tone” for consumers with their tanning products, and Microsoft® signifies software.
  1. Arbitrary – Arbitrary marks are words which have no logical relationship to the product. Even generic terms applied to unrelated products and services are considered Arbitrary. Some examples are Apple®, which makes computers and electronics, and Penguin®, which publishes books.
  1. Fanciful – Fanciful marks are the strongest and most unique marks of all. These words are completely new and invented for the sole purpose of being used as a brand and a trademark for the company. We see these quite often in corporate giants, such as Clorox®, Exxon®, Google®, and Starbucks®.

Proper Trademark Use

A trademark’s significance leads to the importance of its proper use. Whenever a trademark is written out, it should be accompanied by one of two symbols: ™ or ®. These symbols may look familiar, since they appear regularly in our daily lives. The first symbol, ™, indicates to the public, along with the rest of the industry, that you are claiming this trademark as yours. ®, on the other hand, signifies that the trademark present has been officially registered with the US Patent and Trademark Office. The second step in properly using a trademark is it should be distinguishable in one of four ways: ALL CAPS, bold, italics, or underlined. It is imperative that the trademark is used constantly and consistently. Any alteration or decline in usage, presents a person with the opportunity to argue that the mark has been abandoned

Trademark Rights and Registration

Similar to copyrights, trademark rights are acquired at the moment it is first used. Whoever is the first to use or the first to file an application is the party that will possess the superior rights. When establishing your right to a trademark, it is recommended that you note the date of “first use” in your records, in the event your rights are being contested by another claiming to have used it first. Registration is a secure and reliable way, in order to guarantee trademark rights with the mark, as well as providing a bundle of benefits in doing so. Besides serving as excellent evidence of the validity of your ownership over the trademark, it also gives you the ability to sue in federal court. “Incontestability” or immunity in other words, is granted after 5 years of proven, continuous use, as well as the greater recovery of damages including attorneys’ fees and statutory damages. Furthermore, protection is provided for the brand, and ensures future opportunities for growth and expansion.

The Application Process

  1. Screening and Clearing – The first step of the process should begin before the application is even filed. One should determine and research whether or not their trademark is infringing on the rights of anyone else, in order to avoid lawsuits and/or future problems with competitors.
  1. Application is filed with the US Patent and Trademark Office, with a fee of $325-$375 per class.
  1. Application is strictly scrutinized, while checking for potential infringement.
  1. Application is approved and registered for 10 years. Trademarks can be renewed indefinitely, as long as they are continuously used in commerce, and/or become “generic”.

Despite successfully being registered and approved, managing trademarks is still essential to the preservation and protection of one’s trademark rights. Companies must still manage trademark renewals, police the marketplace, in search of possible infringement, or suffer the consequences.

If you manage a business and would like to discuss the creation and/or filing of a trademark, please contact Smith Reed & Armstrong, PLLC here.