Trademark basics
I. What is a Trademark or Service Mark?
To better understand trademarks and service marks, you should think of them as “brand names.” They help consumers distinguish one company’s product or service from those of a competitor.
Trademarks and service marks are very similar. A “trademark” is a symbol used with goods, rather than services. Thus the fanciful drawing of a child on boxes of Buster Brown shoes is a trademark. Marks used with services are called “service marks”. The logo used by your lawn care company is a service mark. For simplicity, we’ll use the terms “trademark”, “service mark” or “mark” interchangeably.
- A. There Are Many Types of Marks
Trademarks can be more than just words or logos. They can be three dimensional symbols, such as McDonald’s “golden arches” or the unique shape of the classic Coke bottle. A trademark can also be a color (e.g., the pink color of Owens-Corning insulation), sounds (e.g., the Intel or NBC chimes) and even scents.
II. Use As The Basis of Ownership
In the United States, trademark rights arise from use, as opposed to registration. At common law, trademark ownership is acquired by actual use of the mark in a given market. To acquire ownership of a trademark it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services.
- A. Why Should First Use Be Determinative?
It might not seem fair at first blush for the law to give greater rights to the use of a mark to someone who used it first rather then the mark’s actual first creator, but you have to remember that one of the main purposes of a mark is to keep consumers from getting confused about the source of goods and services.
Thus it makes sense that once a mark is in use, the public starts to associate that mark with a particular product or service. The owner of a mark acquires both the right to use a particular mark and the right to prevent others from using the same or a confusingly similar mark. Trademark ownership confers an exclusive right to use the mark.
III. Conflicts Between Owners of Marks
When more than one user claims the exclusive right to use an unregistered trademark, priority is determined by the first actual use of the mark in a genuine commercial transaction. As stated above, the general rule is that, as between conflicting claimants to the right to use the same mark, first usage determines the question of ownership.
- A. Senior User v. Junior User
The first user to appropriate and use a particular mark - often called the “senior” user - generally has priority to use the mark to the exclusion of any subsequent - or “junior” - users.
IV. Registration
- A. First Use Rule Creates Registration Problems
As the owner of a mark, you can get many powerful protections for the mark if you register it with the United States Patent and Trademark Office (USPTO). But just registering the mark does not mean that all of your problems are solved. Remember from above that because of the United States’ use-based trademark law, another person or company might own and enforce rights to trademarks that they have never formally sought to register or protect. If they used it first, the fact that you later registered it won’t help you.
B. Necessity for Searches
Registration of a mark costs money. Promoting a mark so the consumer public can identify it with your product or service costs money. Litigation costs money. It is a terrible thing to invest a lot of money into a mark only to see that it is all wasted because someone else has already been using that mark, and is now suing you for infringement.
This is why it is important to conduct a trademark search as a way of determining whether a prospective trademark is available for use and may be registered with the United States Patent and Trademark Office.
C. Similarity Between Marks
Infringement of a trademark is not a matter of simply using a trademark exactly like your competitor. A side-by-side comparison of the marks themselves is not enough. If that were the case, some upstart soft drink manufacturer could use Coke’s distinctive classic glass bottles by coloring them light blue instead of green.
What courts find important is the likelihood of confusion among consumers as to the source of the goods or services. As such, the courts have developed a set of factors in which to analyze likelihood of confusion:
- 1. Strength of the plaintiff’s mark;
2. Relatedness of the goods;
3. Similarity of the marks;
4. Evidence of actual confusion;
5. Marketing channels used;
6. Likely degree of purchaser care;
7. Defendant’s intent in selecting the mark;
8. Likelihood of expansion of the product lines.
D. Protecting A Trademark From Attack
Let’s say that you have a mark registered and/or in first use. You find that someone else is using that same mark or one that is so similar that it might be taking business away from you. You sue that person. The defendant may argue that your mark is not distinctive enough to qualify for protection as a mark. For deciding trademark protectability, trademarks are grouped into five categories according to their relative strength or distinctiveness.
Generic - Generic words cannot be protected as trademarks. Generic words define the product or service. Generic words cannot identify the source of the products or service. For example, Apple Computer’s use of APPLE is not a generic use, but the use of APPLE by a fruit retailer would be a generic use.
Descriptive - It may sound like a good thing for your mark to describe your product. But in reality, it is a bad thing in Trademark Law. A mark is “descriptive” if it is descriptive of (i) the intended purpose, (ii) the function or use of the goods, (iii) the size of the goods, (iv) the class of users of the goods, (iv) a desirable characteristic of the goods, (v) the nature of the goods, (vi) or the end effect upon the user.
Why is it bad to for a mark to be descriptive? Because it could lead to confusion among consumers. If you tried to call your ice cream “Cold” ice cream, consumers would not know what was being discussed when another consumer recommended “cold ice cream” to them. Was the other consumer referring to the temperature he like his ice cream to be, or was he referring to the brand name “Cold”?
There are certain times when a descriptive mark can be protected. This occurs when the descriptive marks acquire secondary meaning. A descriptive mark acquires a secondary meaning when it has been used in such a way that its primary significance in the minds of the prospective purchasers is not the product itself, but the identification of the product with a single source, regardless of whether consumers know who or what that source is.
For example, there is a juice maker out there selling “Juicy juice.” Normally that would be far to descriptive a term to be a mark, but since “Juicy juice” has become so widely used, it has developed a “secondary meaning” among the consumers buying it, such that no one would confuse it with another juice drink.
Suggestive - A suggestive mark “suggests rather than describes an ingredient or characteristic of the goods and requires the observer or listener to use imagination and perception to determine the nature of the goods.” For example, when “apple” is used by “Apple-A-Day” Vitamins, it is being used as a suggestive trademark. “Apple” does not describe what the vitamins are. However, consumers may come to associate the healthfulness of “an apple a day keeping the doctor away” with the supposed benefits of taking “Apple-A-Day” Vitamins.
A distinction developed in the law whereby a mark which merely suggested some quality or ingredient of goods was labeled as “suggestive,” distinguishing it from descriptive marks. Once determined to be suggestive and non-descriptive, a mark is entitled to the same protection accorded arbitrary and fanciful marks (the marks most likely to be protected). That is, a suggestive mark is protected without any necessity for proving secondary meaning.
Arbitrary - An arbitrary mark has a significance recognized in everyday life, but the thing it normally signifies is unrelated to the product or service to which the mark is attached, such as CAMEL cigarettes or APPLE computers. Arbitrary marks are usually afforded strong protection within the specific related class of goods or services.
Fanciful - A fanciful mark is a combination of letters or other symbols signifying nothing other than the product or service to which the mark has been assigned, such as EXXON or KODAK. Fanciful marks are coined or made-up word, which does not exist in the English and other languages, in any dictionary, to identify the source of goods or service. Generally, these marks are given the strongest protection.
While we cannot presume to tell you what is the best trademark for your product or service, knowledge of the relative strength of a trademark should be one guide in selecting the name of your company, product or service. Know that if you chose a name that is descriptive of your product or service that you will not have a protectable trademark, at least initially. Even when you establish that your descriptive trademark has attained secondary meaning, and is thus protectable as a trademark, you will be hard pressed to prevent your competitors from your trademark as a descriptive term.
The strength of a mark is a factual determination of the mark’s distinctiveness. The more distinct a mark, the more likely is the confusion resulting from its infringement, and therefore, the more protection it is due. A mark is strong and distinctive when the public readily accepts it as the hallmark of a particular source; such acceptance can occur when the mark is unique, when it has received intensive advertisement, or both.
Fanciful and arbitrary marks are considered to be the “strongest” or most distinctive marks. “Suggestive” and “descriptive” marks either evoke some quality of the product (e.g., Easy Off, Skinvisible) or describe it directly (e.g., Super Glue). Such marks are considered “weaker,” and confusion is said to be less likely where weak marks are involved.