A trademark is any word, name, symbol, or device or any combination
thereof adopted and used by a manufacturer or merchant to identify his goods or services which distinguishes them from goods
manufactured or sold by others or services provided by others. Goods are protected by trademarks while services are protected
by a service mark.
A trademark provides the consumer or the public with an identification
for the products or services indicating its origin. Trademarks and service marks offer no functionality, but simply form the
identity of the goods or services. Origin in this case does not mean what country it was manufactured in but rather the source
of the goods or services. It is intended to distinguish the goods or services from those provided by other entities.
A word and/or design for which trademark or service mark protection
might be requested can fall into one of four categories. The four categories are (1) Fanciful or (2): Suggestive or (3) Descriptive
or (4) Generic. A “Generic” mark cannot be registered. An example of a “generic” mark is “Blue
A “descriptive” mark can only be registered if it has achieved
secondary meaning. Secondary meaning is achieved when the word(s) will invoke the reader to associate or think of the specific
product or service rather than just the ordinary description. Secondary meaning is a subjective test and is usually proved
by showing wide-spread commercial success and providing consumer research reports to support the recognition amongst the public.
An example would be UPS, the delivery service, and “Brown” which has become associated with their package delivery
A “suggestive” mark is one which requires the reader’s
imagination to determine the goods or services which the mark represents. An example would be “Virgin” representing
the airline and record company. Another example is “Apple” which is the trademark for the computer company. Many
times the difference between a generic mark and a suggestive mark is blurred, as with the “Apple Computer” example.
In that case, the mark can be registered only if the owner can show a strong presence of “secondary meaning”.
A “fanciful” mark is completely arbitrary and bears no
relation to the goods or services which is represents. An example of a “fanciful” mark is Rebok, the sports shoe
company. Another example is “Toyota”, the car manufacturer or “Verizon”, the telephone
A “fanciful” (arbitrary) mark has the highest degree of
protectability because it means nothing except in the context of being associated with a particular manufacturer’s goods
or a business’s services.
while not given the latitude of coverage that a fanciful mark receives, does provide significant protection because it requires
the reader “to connect” the words with the specific goods or services by “suggesting” (associating)
to identify the source.
The mark with the least coverage is a “descriptive” mark.
This is because the mark requires that a secondary meaning has been formed in order for the words to form in the mind of the
reader recognition associated with a particular good(s) or service.
When we speak of “protectability” or “latitude of
coverage”, we are not saying that there are different “levels” of trademarks. All trademarks, once approved
by the appropriate governmental agency (in the United States
this is the US Patent and Trademark Office) receive the same statutory protection. However, the greater the protectability,
in essence the broader the “shadow” cast by the mark. Where a mark casts a broad shadow, its owner can prevent
others from adopting confusingly similar marks. An example is “Kodak”
, the photographic company. Because its mark is fanciful, it would most likely prevail in preventing other companies for using
a mark called “Kodeck” or “Codeact” for the same goods.
This brings forward another point about trademarks and service marks,
called “identification of goods or services” and “international classifications”. Your protection
extends only in the “class(es)” (international classifications) where you have registered. This is why “Nike”
can be trademarked to represent the sneakers and also be a name associated with missiles (from the 1960s cold-war era).
When registering a mark, you can file for protection in multiple classes.
Each class represents a particular range of products (goods) or services. For instance “clothing” is listed under
several different classes depending on whether it is leather jackets or dress suits. Another example is “automotive”
where tires are listed in one classification and engines are listed in yet another. This is why both Nike the tennis shoes
and Nike the missiles are permissible as trademarks yet they represent the same word.
In the United States
trademark rights are based on the use of the mark in commerce. The first person to use the mark usually get priority over
later users. Many times however you want to protect your mark before you actually start using it. So recently the US added an “intent-to-use” provision
to the trademark law. Under “intent-to-use” one can file a trademark application indicating that they have not
yet started to use the mark but intend to do so. They are afforded protection for the mark for 12 months, after which time
the applicant must demonstrate actual use or they will lose their trademark protection.
A trademark offers its owner the ability to prevent others from using the same or
similar marks or names. Depending upon whether the mark is fanciful (which gives the highest and broadest scope of coverage)
or on how much notoriety the mark has will determine how remotely similar the opposing mark can be and still infringe upon
the rights of the registered owner. While “confusingly similar” is a legal term of art much to complicated to
discuss in this brief article, the point to remember is that the opposing mark need not be exactly the same if the registered
mark has significant “secondary meaning”. Unfortunately for the mark’s owner, a determination of secondary
meaning can not be found literally in the law, but must be decided by the courts during litigation.
Some of the factors or tests used in determining similarity are appearance, pronunciation,
suggestiveness, the relationship of the goods or services of the two businesses, and the degree of care which is expected
from the purchasers. Therefore before one invests money marketing a product or service, it is an excellent idea making sure
that the chosen name is not already protected by a trademark registration or already in use by another company.
At a minimum you will be forced by the rightful “first in time” owner
to change your product or service name to one which is not confusingly similar. In many cases, the result can much worse and
the trademark’s owner will sue in court to have the infringing use stopped.
The process of obtaining a trademark registration starts with a thorough search of
commercial names, the records at the US Patent and Trademark office, and also the various Secretary of States. After a search
is conducted, and it indicates no potentially similar marks, an application is submitted to the US Patent and Trademark office.
The application includes a specimen of the mark showing it in actual use and a filing fee of $325 per classification.
Care must be taken in preparing the application, because the simplest of incorrect
wordings can cause an application to fail or deny the application registration in the preferred classifications. When amendments
to the application are allowed, the application can never be “broadened” beyond the initial filing. This is why
it is a good idea to consult with an intellectual property attorney who is familiar with the nuisances of trademark practice.
The trademark office receives all applications and approximately six months after
submission you will receive either a rejection letter or a notice of allowance for publication. If rejected, a response must
be filed within six months that overcomes or rebuts all the examiner’s points of rejection. Once the notice of allowance
for publication is received, the application moves to the next stage of its approval process.
In the publication phase, the trademark office publishes the proposed mark so that
the public can comment. This is where most often objections are raised that a proposed mark is confusingly similar. The owner
of the similar mark will file an opposition(which also carries fee of $325) relating to the trademark office why it should
not allow the mark.
However, if no oppositions are received or the trademark office denies any opposition
motions, the trademark will be allowed for registration. Typically this take anywhere from 9 months to 24 months to complete
the process. While the application is pending, it is advisable to place the letters “TM” adjacent to any use of
the mark. Once the mark is registered the “TM” is replaced with the circle “R” or ®.
The initial registration is valid for five years, after which time the mark registration
must be renewed. The renewal application once again requires the submission of a sample specimen of the mark in use. At the
five year time when the renewal is submitted, you can also apply for “incontestability”. A registered trademark has two stages of registration: the “contestable” stage and the “incontestable”
From the time the mark is first registered the registration provides prima facie
evidence of validity of the mark including a presumption that the mark is inherently distinctive or has acquired distinctiveness
through secondary meaning. However any legal challenger of the mark can attack
the validity of the mark.
Once the mark has been registered for five years and has been in continuous use during
that period, the owner can file an affidavit of “incontestability”. Usually these are filed simultaneously with
the filing of the five year renewal application. An incontestable registration
matures into “conclusive evidence” of the validity of the mark and establishes a cutoff to challenges that the
mark is not inherently distinctive and that the mark lacks secondary meaning. It also removes the challenge that the defendant
has a right of prior use because of an earlier priority. Thus in any lawsuit the registered mark will be viewed as the “senior”
While an incontestable mark provides its owner many benefits, the owner in an infringement
action must still prove that there is a likelihood of confusion between its mark and the alleged infringing mark. Having an
incontestable mark is not of itself enough based to preclude all challenges to an allegation of infringement.
If you need more information or wish to discuss specific aspects of
a trademark issue, contact our office and we will be happy to arrange a fee-based consultation.