Guide to Trademarks
Trademarks are identifying names or symbols that mark a product or service as being uniquely associated with the company which sells or offers that product or service. Two or more companies may sell similar products, but trademarks distinguish one such company from another. Both McDonalds and Burger King sell hamburgers, for instance, but only McDonalds is allowed to mark its food products with the golden arches. Trademarks help build brands, and the law of trademark helps companies hold onto those brands once they become recognizable on a larger scale.
Eligibility. Short words and phrases are not eligible for protection under copyright, but they can be trademarked. Things which are eligible for trademark protection include:
- Graphic designs
- Distinct sounds and smells
- Combinations of the above things
In order for a name or mark to be eligible for trademark protection, it must represent a product or service such that consumers identify that product or service with that particular name or mark. This means that very generic marks are unlikely to be granted trademark protection, since they are more likely to be associated with things beyond a specific product or service. The more specific and esoteric an identifying name or mark is, the better chance it stands of getting trademark protection. To help illustrate this spectrum, trademarks are divided into four distinct types, starting with the least likely to be eligible for protection and ending with the most likely.
- Generic Mark. Generic marks identify a general type of product rather than a specific version of that product. If, for example, you are in the business of selling different types of chairs, you cannot get a trademark on the term “rocking chair.” It is already known for something beyond your particular product. Generic marks will not get trademark protection.
- Descriptive Mark. A descriptive mark describes a product characteristic. If, continuing with the example from the previous paragraph, you decided to label your rocking chair as “Wooden Rocking Chair,” you would have labeled it with a descriptive mark. Unfortunately, many rocking chairs are made of wood, so this is probably still not enough to be deserving of trademark protection, but it has a better chance of getting protection than does a purely generic mark.
- Suggestive Mark. A suggestive mark is one that describes a product in a more specific way than does a descriptive mark. If you call your rocking chairs “Fine Pine Rocking Chairs,” the name might stand a chance of getting trademark protection. Such a name describes a specific kind of rocking chair rather than describing rocking chairs in general. As you can see, the further away your name or mark is from a generic name or mark, the more deserving of trademark protection it becomes.
- Arbitrary or Fanciful Marks. These kinds of marks have little or nothing to do with the product they represent and stand the most chance of receiving trademark protection. Neither the name McDonald’s nor the symbol of the golden arches have anything to do with hamburgers, but have become so identified over long periods of use. They are arbitrary marks due protection under the law of trademark.
Descriptive, Suggestive, and Arbitrary marks all have something in common: they are presumed to have “secondary meaning.” Secondary meaning is a legal term indicating that a product or service has become associated in the mind of the public with the particular product or service which it represents. When a name or mark has secondary meaning, the owner can claim trademark protection.
How to Get a Trademark. One can get a trademark for a product or service in a number of ways:
- Use it. A person has rights in a trademark the first time they use it in commerce.
- One can register their trademark at either the state or federal level. Registering as the federal level is recommended as it protects your mark nationwide. To register a trademark, simply file a registration application with the US Trademark and Patent Office. An examiner will conduct a search to see if any currently registered names or marks are similar to your name or mark. If no such name or mark exists, your application will be approved and notice of your registration will be published.
No one is required to register for a trademark, but doing so provides certain advantages. For one thing, registration puts those who might want to register their own marks on notice of yours. For another, registration gives you a legal presumption of ownership, so if there’s ever a conflict the law will assume that you are the owner of the trademark and the person who allegedly infringed upon it will have to prove otherwise.
Consequences for Infringement: The penalties for using a mark without the owner's permission can be serious. If you infringe someone else's mark without knowing it, you could have to pay the owner lost profits from the sales of the owner’s goods or services. If you intentionally infringe upon someone else’s mark, you may have to pay all profits you made selling the goods or services that used the mark, plus attorney's fees.