Trademarks are very valuable forms of intellectual property, but they differ significantly from patents and copyrights, which provide legal protections for intellectual creations, namely inventions and works of authorship. Instead, trademarks are premised on protecting consumers and purchasers of products and services from being misled regarding the source of those products and services.
A trademark is a company’s representative of goodwill to the world, a means of conveying commercial information to customers, potential consumers and the public generally. Trademarks are “source identifiers.” They associate the mark with the source of the goods or services created and used in commerce with that mark. The more traditional trademarks are single or multiple words, slogans, logos, or designs, or the overall image or impression, what we refer to as “trade dress.” Less traditional trademarks are colors, sounds, and scents.
U.S. trademark law recognizes rights in your use of the mark. We refer to these rights as “common law rights.” As an owner of the mark, you can defend the right to use this mark, and you can sue to enforce these common law trademark rights. However, your chances of success in enforcement are strengthened if you register your trademark with the U.S. Patent and Trademark Office, also known as the USPTO.
Trademarks vary in strength. The strongest trademarks are either (1) fanciful or (2) arbitrary. “Fanciful” marks have no meaning, they are made up words – think “Google®” or “Starbucks®.” “Arbitrary” marks are words which are used other than for their naturally understood meaning – think “Apple®” for the ubiquitous iPhone®, not the fruit.
The next strongest marks are those that are suggestive: that is, they suggest certain features or characteristics of the quality of the goods or services, but you have to use your imagination to associate the mark with those goods or services. Microsoft®, for example, suggests “microcomputers” and “software” but does not expressly refer to computers and software.
As we go along the spectrum from strongest to weakest, descriptive marks are weak marks. They describe a feature or characteristic of the product or service. For example, Raisin Bran® informs us of the prominent ingredients of the popular cereal. U.S. trademark law recognizes that descriptive marks can gather strength over time, with increased use and public exposure which leads to more extensive consumer recognition. In fact, after five years of continuous use, the law recognizes what we call a presumption of “acquired distinctiveness.” In other words, whereas at the outset a descriptive mark could not be deemed unique, with extensive advertising and sales over a longer period of time, the mark becomes associated with the owner of that product or service and acquires distinctiveness.
The very weakest type of mark is called generic. This mark tells the consumer precisely the nature of the goods and services, and is afforded absolutely no protection under the law because to do so would constitute unfair competition – you cannot coopt a term from the public domain. An example of a generic mark is LOCKDOWN ALARM, for training services in the field of school safety, school security and school preparedness. The applicant who attempted to register that mark at the USPTO was refused registration based on genericness. The USPTO examining attorney assigned to the mark pointed to many third-party websites that use the terms to refer to school safety, security and preparedness training. The applicant appealed the Examining Attorney’s decision to the Trademark Trial and Appeal Board – the administrative tribunal within the USPTO, and the panel of judges there agreed with the Examining Attorney and affirmed refusal of registration on the Supplemental Register.
This brings up the question: what is the Supplemental Register? There are 2 registers at the USPTO: (1) the Principal and (2) the Supplemental. Ideally, you want to register your mark on the Principal Register. However, if your mark is deemed descriptive, it may be eligible for registration on the Supplemental Register if it is currently in use. While registration on the Supplemental Register does not give your mark certain evidentiary presumptions – for example, validity, ownership, exclusive rights in the mark – a mark registered on the Supplemental Register will prevent or deter others from trying to register or use the same or similar mark, you can still use the ® registration symbol, and you can defend and sue to enforce your mark.
You may hear about “service marks” – these are merely a type of trademark associated with a service (for example, business consulting services) as opposed to a product (for example, software). Other categories of trademarks are certification marks and collective marks. A certification mark is used by persons other than the owner of the mark to certify an aspect of the third parties’ goods and services. For example, it may indicate region or origin, or a manner of manufacture or quality or accuracy of the characteristics of the product or services, or that the work was performed by a member of a certain organization. By way of example, a well-known certification mark is that of Underwriters’ Laboratories indicating the testing, inspection, certification and validation services of the company, recognizable by the UL within the circle, appearing on over 22 billion products annually, according to UL.
The collective membership mark refers to the mark used by members of a cooperative or other collective group or organization and includes marks indicating membership in that association. For example, FTD used by florists who are members of the Florists’ Transworld Delivery Association, or the REALTOR® mark owned and used by the National Association of Realtors to distinguish their members and their real estate related services from non-members.
No matter what type of mark, they all have in common the purpose to protect the goodwill of the business. Because the function of a mark is to protect the goodwill of the business, a right in the mark is created by its adoption and use in connection with that business, and if there is no business, there is no goodwill and, therefore, nothing to protect. Trademark rights arise from actual use of a trademark in trade, in connection with an existing business. In short, if there is no trade, there can be no trademark.
It is a fundamental principal of trademark law that rights in a mark belong to the party first to use a trademark in the market. “Priority of use” is controlling. That party has the right to exclude others from using the same or confusingly similar marks. This right extends to all geographic areas in which the mark has been used on the goods or services.
While this use establishes priority and “common law” rights, it is vital to the strength of your mark that you register the mark at the USPTO. So, what does that federal registration give you? The answer is: many advantages, including that federal registration gives you constructive notice of nationwide use. Note that an earlier used identical mark will have prior rights, but those rights are confined to that geographic area of use. Federal registration also serves as constructive notice to potential infringers. Additionally, a federal registration can serve as a basis for application and registration of your mark in many foreign countries. Further, a federal registration makes it easier to enforce your trademark rights: the registration gives the registrant a statutory basis to sue in court for infringement without regard to the diversity of citizenship of the parties, and it affords the registrant the evidentiary presumptions of validity, ownership and exclusive nationwide rights. Additionally, you can use that registration (if registered on the Principal Register) to bar importation of infringing goods.
So, how do you register your mark? That is the topic of my next article.
