Trademark Law

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Trademark law FAQ

What is a Trademark?

A trademark is any brand name, logo, slogan, or other item that relates to the source of goods and services and the quality of those goods and services.

Trademark law is a form of consumer protection.

One company puts its mark on its goods or services in order to show its quality of its goods or services and in order to show the source of those goods or services.

What is a Fanciful Trademark?

A fanciful is the strongest trademark. The mark has no relation to the product. “Kodak” is the best example because the word was created for use as a trademark.

What is an Arbitrary Trademark?

An arbitrary is a mark that is a word (or phrase) that already exists, so it is chosen for no particular reason.  Think of “McDonald’s” in fast food or “Target” in retail stores.

What is a Suggestive Trademark?

A suggestive trademark suggests a quality of the product.  Think of “Burger King” in this category.  The mark makes you think of those burgers as being the king – or the best – in the burger industry.

What is a Descriptive Trademark?

A descriptive mark describes the product. This is a weak trademark that requires “secondary meaning” in order to gain trademark protection. Usually, it must be proven that the public can identify the product comes from one producer. 

What is a Generic Trademark?

What is a Generic Trademark?

Generic “marks” are common, every-day terms.  These terms include apple, computer, mouse, desk, chair, pencil. 

Trademarks, however, can become generic.

Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) “The crux of this controversy, however, lies not in the use of the word to these buyers, but to the general consuming public, composed of all sorts of buyers from those somewhat acquainted with pharmaceutical terms to those who knew nothing of them.”

Why do I need to Register a Trademark?

A registered trademark confers a bundle of exclusive rights upon the registered owner, including the right to exclusive use of the mark in relation to the products or services for which it is registered.

For example, without the registration, a plaintiff is unable to claim trademark infringement under the Lanham Act.  Therefore, the ability to enforce in Federal Courts is paramount to the trademark registration.

Also, a common-law (unregistered) trademark is not vetted or reviewed and there could be geographic or goods/services issues.

What Trademarks can Register?

Any “trademark by which the goods of the applicant may be distinguished from the goods of others” may be registered.  15 U.S.C. §1052 

In other words, if your trademark or your goods or services are different from others in the register at the United States Patent and Trademark Office, your trademark can register.

When you register a trademark for your business name, are all associated logos automatically included? Or do you have to register logos separately?

If you are filing a plain-text trademark application in the United States Patent and Trademark Office, you should understand that the only protection is for the text of the trademark.  Designs and logos are not protected under a plain-text filing.  However, with a plain-text filing, the trademark owner can take the text and design it in any way the trademark owner wants.

Can trademark law protect quotes, tag lines, catchphrases, marketing phrases, and business slogans?

That is the traditional purview of trademark law.  But trademark law has even protected the shape of products, colors, and sometimes sounds.  All quotes, tag lines, catchphrases, marketing phrases, and business slogans, shapes, colors, and sounds must be related to products, goods, or the marketing of services.

If a business owner had a company name for a few years and hadn’t registered it as a trademark, can someone else register the name for their claim or use? What can the owner do if this occurs?

Trademark registration is a first-to-register system.  In other words, a trademark owner must register first in order to assert federally protected trademark rights.  If a trademark owner is second to file with the USPTO, but has been using a similar trademark for longer than a junior trademark owner, then the senior owner may be able to file to cancel another mark in the Trademark Trial and Appeal Board. 

Going to the USPTO and filing your trademark as early as possible is always the best remedy for this problem.

What are common law rights? What protections do they offer?

Trademark rights arise in the United States from the actual use of the mark. Thus, if a product is sold under a brand name, common law trademark rights have been created. This is especially true once consumers view the brand name as an indicator the product’s source.

The term “common law” indicates that the trademark rights that are developed through use are not governed by statute. Instead, common law trademark rights have been developed under a judicially created scheme of rights governed by state law.

Common law trademark rights are limited to the geographic area in which the mark is used. Thus, if a coffee blend is sold under the name BIG BANG in California only, the trademark rights to that name exist only in California. If another coffee retailer begins to market a different blend in New York under the same name (assuming they had no knowledge of the California company), then there would be no trademark infringement. However, if the New York company attempted to sell their coffee blend nation-wide, they would discover that the California company’s common law rights to the mark would prevent them from entering the California market.

Once a trademark is approved, does that mean you can use the letters “TM" in all logos/branding? What are the guidelines there?

The TM symbol is meant to provide notice to the public that a trademark owner claims a trademark right in the term or design. To clarify, this right can be associated with a trademark claim under a common law right, a state registration, or a federal registration. Therefore, you are not required to have completed a state or federal filing to use the TM symbol.

A trademark that is federally registered is often identified with the “R” (within a circle) symbol, or registered mark: ®. The “R” (within a circle) symbol can only be used in connection with an active federally registered trademark.

A COMPLEX ISSUE

Trademark law is a constantly changing challenge

A properly managed intellectual property portfolio can help protect the value of your business and provide recourse against infringement by domestic and international competitors.

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