Wednesday, June 8, 2022
Rita Guirguis Staff Reporter (2021 – 2022)
What is a trademark?
A trademark is one of the various types of intellectual property protected by US law.1 A trademark is protected at both the federal and state level.2 A trademark serves several purposes, including identifying the origin of goods and services, distinguishing the owner’s goods and services from those of others, and providing the owner of the mark the right to prevent others from adopting similar marks that could cause confusion in the marketplace.3 In order to receive trademark protection, your mark must be (1) distinctive and (2) used in interstate commerce.4As a business owner, your trademark can be your most valuable asset.
Under the Lanham Act, a protected mark can be a trademark, service mark, collective mark, or certification mark:5
A trademark includes any words, names, designs, symbols, devices, or combination thereof used in commerce to distinguish the source of goods.6
A service mark includes any words, names, design, symbols, device, or combination thereof used in commerce to distinguish the source services.7
A collective mark is a trademark or service mark adopted by a cooperative, union, association, or other collective group for use by individual members of the group.8 Unlike trademarks or service marks, collective marks are not used in commerce to distinguish the source of goods or services.9 Instead, it’s used to identify the person using the mark as a member of the collective organization.10
A certification mark includes any word, name, design, symbol, device, of combination thereof used in commerce to show consumers that particular goods or services have met certain standards.11 Unlike trademarks and service marks, the owner of the mark does not use the mark.12 Instead it used by a third party to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristic of a person’s goods or services.13
You will want a trademark that is inherently distinctive.14 An inherently distinctive trademark quickly and clearly identifies you as the source of your goods or services.15
The following are unacceptable trademarks and are often not federally registrable:
Generic: Generic trademarks are common terms used to name a product or service.16 For example, a brand of paper called “paper” is a generic trademark and is therefore free to be used by anyone.
Descriptive: A descriptive trademark is a word that describes a product or its ingredients, quality, characteristic, function, feature, purpose, or use.17 For example, the mark “creamy” for yogurt is considered a descriptive mark because any literal-minded person would understand the significance of the reference.18
The following are acceptable trademarks and generally receive trademark protection:
Suggestive: A suggestive mark hints at a good or service without actually describing it, and requires some imagination to determine the product or service.19An example would be Coppertone® for sun-tanning products.20
Arbitrary: An arbitrary mark consists of existing words that don’t relate to the business’s goods or services.21 Arbitrary marks are distinctive and are given trademark protection. Examples would include Dove® for chocolate or Apple® for electronics.22
Fanciful: A fanciful mark is an invented word or phrase.23 Examples include Exxon® for petroleum or Pepsi® for soft drinks.24
Use in commerce
To establish protectable trademark rights, a party must prove that their mark was used in commerce.25 Examples of when a mark is used in commerce for goods include when the mark is placed on the goods, on the containers of goods, on a display that’s associated with the goods, or on tags and labels.26 Examples of when a mark is used in commerce for services include advertising and marketing materials displaying the mark.27
How do I obtain trademark protection? Why should I do it?
While registering a trademark is not required, it is preferred.28 There are several benefits to registering your trademark: (1) the assumption that your trademark is valid; (2) constructive nationwide use of the mark; (3) the ability to bring a case in federal court over infringement; (4) the ability to recover damages for infringement; (5) constructive notice of ownership, which eliminates the defenses of good faith use; and (6) after five years, the registration may become incontestable and conclusive evidence of the owner’s exclusive rights to use the mark.29
Search the trademark
Before filing for trademark protection, you’ll want to investigate whether your mark is available for use. The search process is meant to identify marks that could be confused with your mark. Searches can be done using the Patent and Trademark Office (PTO) database, or even on Google.
The Principal Register
Once you’ve completed your search and determined your mark is available, you’ll want to apply for registration on PTO’s Principal Register.30 The Principal Register provides the trademark owner the greatest protection, including a presumption that the trademark is valid and that the registrant has the exclusive right to use the mark. However, you must meet certain criteria in order in order to qualify for registration with the Principal Register. Refer to the PTO’s website or an attorney to determine if you qualify.
Contents of the application
Your mark must be already used in commerce or have the intent to use in the future to file your application. Your trademark application must contain the following information prior to submission:
Your name and address;
The type of legal entity and citizenship you possess;
Name and address for correspondence;
A drawing of the mark;
A description of the mark;
A list of goods and services covered by the application;
The international classes of the goods and services;
The date of first use of the mark and a specimen of use of the mark;
A verified statement or declaration; and
The required fee
An application will use the Trademark Electronic Application System (TEAS) to file your application. TEAS has two different filing options, Plus or Standard. TEAS Plus is the cheapest option, as it costs $250 to file. With TEAS Plus, you must pick a description of your goods and services from a preset list. TEAS Standard costs $350, but allows you to create a custom description of your goods and services.
Your business is important, and you will want to take the steps required to ensure that your business is protected from trademark infringement. Once you’ve received trademark protection, you will then have the ability to enforce your rights against trademark infringement, protecting your business and its products and services.
1 Practical Law Intellectual Property & Technology, ‘Trademark: Overview’ Westlaw Practical Law accessed 26 April 2022. 2 Id. 3 Id. 4 15 U.S.C.A § 1114(1). 5 Stacy L. Davis, Annotation, Types of Marks, 32 Fed. Proc., K. Ed § 74:3. 6 Id. 7 Id. 8 Id. 9 Id. 10 Id. 11 Id. 12 Id. 13 Id. 14 Strong Trademarks, United States Patent and Trademark Office (Mar. 31, 2021), https://www.uspto.gov/trademarks/basics/strong-trademarks. 15 Id. 16 Id. 17 Id. 18 Id. 19 Id. 20 Id. 21 Id. 22 Id. 23 Id. 24 Id. 25 Joseph E. Edwards, Annotation, What constitutes “in commerce” within meaning of § 32(1)(a) of Lanham Trade-Mark Act (15 I.S.C.A. § 1114(a)) giving right of action for infringement of trademark “in commerce”, 15 A.L.R Fed. 368. 26 Id. 27 Id. 28 Michael J. Schwab, Acquiring Trademark Rights and Registrations, Practical Law Practice Note 2-505-1700. 29 Id. 30 15 U.S.C.A § 1051(a)(1).