What are trademarks?
Trademarks 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 of goods and services. It is a way which allows a person to know the product they are using comes from a specific source in the marketplace. This allows consumers to return to the same source for the goods and services they want. They help promote the quality of the goods and establish a company’s brand.
What can be trademarked?
A wide variety of things may be trademarked, including names, symbols, slogans, designs, sounds, colors, smells, and recently, domains. The rumble of a Harley-Davidson engine is a classic example of the flexibility of trademarks. This sound is indeed registered and Harley-Davidson has filed lawsuits to protect it.
Three subcategories of marks exist: 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 of five levels: Generic, Descriptive, Suggestive, Arbitrary, and Fanciful.
- 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 loses its distinctiveness and become the new generic term for a product. These marks are no longer entitled to any form of protection. Former trademarks that have suffered genericide include bleach, cola, escalator, thermos, and zipper.
- 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 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.
- 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.
- 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.
- 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. 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 to guarantee trademark rights with the mark. 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. Damages for the improper use of a registered trademark include any actual damages incurred by the infringement, attorneys’ fees and statutory damages.
The Application Process
- 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.
- Application is filed with the US Patent and Trademark Office, with a fee of $325-$375 per class.
- Application is strictly scrutinized, while checking for potential infringement.
- 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.