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What is a Trademark?

At the most basic level, a trademark is a device that is associated with particular goods or services.  Commonly called a “mark,” this device could be a word, picture, logo, short phrase or a combination of all of those elements.  In recent years, certain colors and even smells have been registered as trademarks in limited situations. The key to an effective device is that when a person notices the trademark, they will know who produces the good or service that the mark is associated with.

Why do we use trademarks?

Trademarks provide protection for both consumers and businesses.  Trademarks tell consumers where a particular good came from, or who is providing a particular service.  Over time, a business will build a reputation that will become associated with their particular trademark.  This way, when a person sees the mark associated with a good, they will know that the good will be of a quality that the business is known for.

Where did trademarks come from?

The earliest known use of marks to identify the source of goods was from Roman blacksmiths who forged swords for the empire.  The first recorded laws regarding trademark protection were passed by the Parliament of England in 1266. Those early laws were designed to protect consumers by requiring bakers to use a mark to identify the bread that they sold.  One of the oldest known trademarks that is still in use today is the lion mark used by the brewer Löwenbräu, whose lion mark has been in use since the 17th century.

In the United States, the earliest trademark laws were created in 1870, although they were struck down less than ten years later.  Congress passed new laws in 1881, and again in 1905. The current statutes that govern trademarks were created in the Lanham Act in 1946, and are codified in Title 15 of the United States Code.

Because of the long history of trademark use, there is a great deal of case law that has interpreted the rights and role of trademark use.

What are the benefits of owning a trademark?

Simply put, trademarks make it easier for customers to find a business.  A good trademark is an attention grabber that immediately lets a consumer know who they are dealing with, and the quality of the service or good that they will receive.

Additionally, a trademark can eventually become a valuable asset itself.  As the value of a brand rises, the value of its associated trademarks will rise as well.  If a business is looking to be acquired, a valuable mark can greatly ease this process. Trademarks themselves can be bought and sold, providing another means of income for a business.

How do I get a trademark?

A trademark can be acquired simply by creating a mark and using it in commerce.  This means that the mark must be used on saleable goods, on a website where business is conducted, or anything that shows that you are doing business with that particular mark.

However, to obtain the full benefits of a trademark, it must be registered with the United States Patent Trademark Office (USPTO).  Registration provides a number of benefits:

  • The right to use the registered trademark symbol: ®

  • It bars the registration of a similar mark that may conflict

  • It can be the basis of an international trademark application

  • Most importantly: It grants the right to file a trademark infringement lawsuit in federal court if someone uses the mark or a confusingly similar mark without the owner’s permission.  The owner may sue for the infringer’s profits, any costs, and damages. In some cases the owner may sue for treble (triple) damages and attorney fees.

In order to register the mark, an application must be sent to the USPTO.  This may be a paper form, or it can be done online through the Trademark Electronic Application System (TEAS).  On the USPTO website. Trademark registration can be a confusing process, so it is a good idea to speak to an attorney before filing.

If a business knows what mark they want to use, but is not yet ready to begin services, then they can preserve the trademark for their future use by filing an Intent to Use (ITU) application along with their chosen mark.  This will preserve the trademark for six months after the USPTO grants a notice of allowance. The six months can be extended if the business is still not ready at the end of that time period, to a maximum of 36 months.

How long does trademark protection last?

Unlike registered patents and copyrights, trademark protection can potentially last forever.  As long as the mark is used in commerce, and is maintained by the business, then it will never expire.  A trademark must also be periodically renewed with the USPTO.

In order to maintain the mark, a business must carefully watch to ensure that others do not use the mark without his permission, or use a confusingly similar mark.  If a business allows others to use the mark without permission, or use a mark that is similar to the original, then the business may lose the mark. Monitoring a trademark is an important part of owning one, and a trademark attorney should be consulted as to the most effective means of doing so.

A trademark may also be lost if it is abandoned. This means that the owner of the mark has ceased using the mark, and has given some indication that they will not use the mark in the future.  This indication could be a statement saying that they will no longer use the mark, or it will be presumed if the mark is not used for three consecutive years. A trademark owner should be careful what they say about the mark if they stop using it for a short length of time.  Once a mark is abandoned, it can be very difficult for the original owner to recapture.

The final way that a trademark can be lost is if it becomes generic.  This occurs when a trademark becomes so associated with a particular good that the name of the mark becomes synonymous, and the name of the original product is lost.  If this occurs, then the trademark is lost. A few well known examples of trademarks that became generic include:

  1. Hovercraft

  2. Escalator

  3. Flip Phone

  4. Kerosene

  5. Thermos

  6. Aspirin

  7. Videotape

  8. Heroin (yes, really)

A generic mark is a victim of its own success.  The mark has become so popular that people believe it to be the name of the product.  It is difficult, but not impossible, to stop a mark from becoming generic. It is important to manage a brand to ensure that a mark does not suffer this fate.

The Trademark Spectrum of Distinctiveness

Perhaps the most important requirement for a trademark is distinctiveness.  In order to register a mark, it must not be descriptive of the product. For example, a store that sold chairs could not trademark the phrase “best chair.”  Generally, the more unrelated or arbitrary a mark is to the product sold, the stronger it will be come. In the case Abercrombie & Fitch Co. v. Hunting World (1974), the federal government ranked trademarks according to the following scale of distinctiveness, from strongest to weakest:

Fanciful Marks

  • A fanciful mark is a made-up word that previously had no meaning, such as Exxon or Kodiak.

Arbitrary Marks

  • An arbitrary mark is a pre-existing and common word that has no relation to the goods sold.  Perhaps the most well-known arbitrary mark is the “Apple” brand of computers and electronic goods.

Suggestive Marks

  • A suggestive mark indicates or give some clue as to the nature of the product.  Well-known examples are “Microsoft” for micro-processors, or “Blu-ray” for a product that uses a blue-hued laser.

Descriptive Marks

  • A descriptive mark is a common word that is used to describe a product or service directly related to that word.  For example, if a dentist named his business “32Dentist,” that mark would be descriptive, as there are 32 teeth in the human mouth, and the business is dental.

Generic Term

  • A generic mark is one that directly describes a product. For example, using the word “sugar” to sell sugar.  As described above, a trademark may become generic if the mark becomes synonymous with the product.

If a mark is descriptive, usually it cannot be registered with the USPTO.  However, it is possible for a mark to acquire “secondary meaning” if the owner can demonstrate that consumers in the marketplace have associated the mark with the goods provider by the trademark owner.  If a mark has been used for at least five consecutive years from the date of registration, the owner’s right to use the mark may become incontestable, and cannot be cancelled for non-use.

The Bottom Line

A trademark can be very valuable for a business, but a proper mark must be selected, and it must be managed and protected.  Above all: DO NOT SELECT A MARK UNTIL YOU KNOW THAT NO ONE ELSE IS USING IT OR A SIMILAR MARK. It is very easy to commit trademark infringement accidentally, even if you think a mark is not being used.

If you have any further questions about trademarks, feel free to contact the team at Start Art Legal.  Jake and Matt can be reached at jake.janzen@startartlegal.com or matthew.dedon@startartlegal.com, respectively.  We will always respond to your questions.

Disclaimer

The information provided in this article is presented for informational purposes only.  This article contains general legal advice, and reading this article does not create an attorney-client relationship between the viewer and Start Art Legal.  This article may be considered advertising under applicable law and ethical rules.



Matthew Dedon