A. TYPES OF TRADEMARKS
Trademarks should be dramatic. It should stand out because you will have a better chance of it being protected. A Trademark concerns a sale of goods, a Service Mark concerns the sale of services. There are not much differences and they are used interchangeably. There is also a Certification Mark which identifies the authoritative entity which certifies a particular good. There is also Collective Membership Marks, which is a type of trademark used by members of a collective, association, or other organization to indicate membership and to distinguish the goods and services of members from those of non-members.
B. WHAT IS A TRADEMARK?
Trademarks are symbols. The symbols can be words (i.e. word marks), slogans, phrases, logos (i.e. design mark, such as the NBC peacock symbol), font-style (i.e. the Coca-Cola lettering), scents, packaging, sounds (i.e. the MGM lion roar), a series of musical notes, or even a color scheme. Protection is afforded to the source of the good, not the good itself. A trademark represents business reputation, goodwill, and brand identity. Trademark law provides incentive to businesses to invest in the quality of their goods.
The language of the Lanham Act, also known as the Trademark Act, the Federal law regulating trademarks, states that trademarks include: “any word, name, symbol, or device, or any combination thereof.” The definition is therefore not restrictive and covers almost anything that is capable of carrying meaning.
C. WHAT IS NOT A TRADEMARK
Many “names” do not qualify as trademarks because they do not properly indicate the source of a good or service.
1. DOMAIN NAMES ARE NOT TRADEMARKS
The use of a domain name to identify a web address is not a trademark. Moreover, registration of a domain name on an accredited registrar does not give you any legal rights. In fact, the registered domain name may be required to be surrendered if it infringes on a trademark.
2. BUSINESS NAMES ARE NOT TRADEMARKS
The use of business name does not qualify as a trademark. In fact, despite filing your business with the Secretary of State, the use of the business name may be prevented if it is found to likely cause confusion with an existing trademark.
3. ORNAMENTAL DESIGNS ARE NOT TRADEMARKS
A design being used in a purely ornamental or decorative manner is not protected as a trademark. For example, use of a design on the front of a t-shirt has not traditionally been protected as a trademark. However, if the design on the t-shirt is recognized as a mark of another source, such as a television show, then the use may be considered as a trademark. Another example is the Nike Swoosh – it depends on how the mark is marketed. Nike does not always depict the mark on the front of the t-shirt but rather as a logo on the product. Even more, public perception is very important – it is all about how the public perceives the mark.
4. PRODUCT FEATURES ARE PROTECTED BY TRADE DRESS
Identifying features of a product are protectable if they do not present an unfair competitive advantage. Product features are generally protected under “trade dress,” which allows for protection if the consumers associate the specific feature with the particular manufacturer rather than with the product in general. For example, the Listerine container is protected by trade dress.
5. FUNCTIONALITY IS NOT PROTECTED BY TRADE DRESS OR TRADEMARK
However, the feature will not be protected if it serves a functional purpose because such protection would present an unfair competitive advantage to the particular manufacturer. For example, if the product feature allows for functionality of the product, such as easier handling or storing, then the feature will not be protected by trademark or trade dress. Also, a scent cannot be trademarked if it is a function of the good you are selling, such as a perfume.
II. TRADEMARKS MUST BE DISTINCTIVE
When selecting a trademark, the key characteristic is its distinctiveness. The most distinctive marks are fanciful, the next distinctive mark is arbitrary, then suggestive, descriptive, and lastly generic. Coined, arbitrary, fanciful, and suggestive marks are considered “inherently distinctive marks” and are registered on the Principal Register, the primary register of trademarks maintained by the United States Patent and Trademark Office (USPTO). The Courts group marks into four categories based on the relationship between the mark and its product. Some marks are afforded more potent rights and therefore more protection.
The four categories of trademarks, from the strongest to the weakest in terms of being distinctive and protected, are:
(1) Arbitrary and Fanciful (Strongest);
(2) Suggestive (Medium);
(3) Descriptive (Weak); and
(4) Generic (No Protection).
A. ARBITRARY OR FANCIFUL MARKS
A fanciful mark is an invented word with no dictionary meaning. They consist of coined terms. For example, the marks “Exxon,” “Kodak,” “Polaroid,” “Starbucks,” “Xerox,” and “Haagen Daz.” They bear no relationship to their underlying product which are respectively gasoline, cameras, coffee, copy machines, and ice cream.
An arbitrary mark also bears no relationship to its product. For example, “Apple” for computers, or “Banana” for tires, or “All-State” for insurance, or the Nike Swoosh for sports apparel.
Arbitrary and fanciful marks are inherently distinctive and are given a very high level of protection under trademark law. They are prima facie registrable.
B. SUGGESTIVE MARKS
A suggestive mark refers to a particular characteristic of the underlying product. But it does not specifically describe the good. Rather, it is subtle. The consumer must exercise his or her imagination to understand the reference. Suggestive marks are considered distinctive and are given protection. For example, “Whirlpool” washing machines, “Coppertone” suntan lotion, and “Ivory” soap.
C. DESCRIPTIVE MARKS
Descriptive marks directly describe the product, or some important characteristic of the product. For example, a depiction of a television for a “television repair service.” Descriptive marks are initially not protectable. Describing the nature or quality of the good is not protectable, unless it acquires a secondary meaning. As a practical note, in order to make a descriptive mark distinctive, it is possible to give the mark a distinctive type font and register it as a design logo by submitting a Special Form Mark drawing.
D. DESCRIPTIVE MARKS MUST HAVE SECONDARY MEANINGS TO BE PROTECTED
Secondary meaning is when the public perceives the mark as a trademark rather than its primary meaning. A common example is the mark “Holiday Inn.” The mark must be thought of as a brand and not as a descriptive word. The public must associate the mark with a particular company and not the product in general. The test is for whether the mark has acquired secondary meaning is: Does the consuming public primarily associate the mark with a particular producer, rather than the underlying product? The Court will base the determination of secondary meaning on factors:
(1) Amount and manner of advertising;
(2) Volume of sales;
(3) Length and manner of the mark’s use (generally extensive use in commerce over a five (5) year period); and
(4) Results of consumer surveys.
Where the Defendant seeks to justify the use of a common word by the argument that he needs it to describe the particular product, Courts have developed a test to determine whether there is an “unnecessary use” by the Defendant. The concept of necessity is evoked not as a standard of legality, but rather as a test for an illegal intent. If there is no real necessity for the use of a particular term, because there are others of equal effect and in common use, or if the Defendant cannot offer a reasonable explanation for the particular usage, then a strong presumption that an intent to unfairly compete exists. The Defendant bears the burden to justify the use.
E. GENERIC MARKS
A generic mark describes the general category of the product. Generic marks are entitled no protection whatsoever under trademark law. For example, the mark “Apple” could not be used to identify apples as a product. No producer is entitled to have the exclusive right to use a generic term. Furthermore, in some circumstances, an original term can become generic over time through a process referred to as “genericity.”