What Is A Trademark?

trademark lawyer
Have s few trademark law questions? Internet lawyer Aaron Kelly explains the law in plain English.

Internet Lawyer Explains U.S. Trademark Law

Trademarks are ubiquitous, but few people know precisely what they are. Fewer still are familiar with registration and trademark protection standards.

What Exactly Is A Trademark?

A trademark is a broad term covering features of a company’s products that distinguish it from competitors. Most unique and distinguishing marks can be treated as a trademark. The name “Levi Strauss,” the Nike “Swoosh” and the unique shape of the original Coca-Cola bottle all qualify as trademarks.

History Of Trademark Law In The United States

Understanding the status of modern trademark law requires nominal familiarity with the history of trademarks.

In our nation’s infancy, logos, phrases and taglines weren’t protected under Federal law, but many states had intellectual property laws on the books. Businesspeople couldn’t just steal the marketing material created by competitors, though, thanks to the common law doctrine of “unfair competition.”

As the country’s economy grew, divergent state trademark standards caused inter-state legal problems. As a result, beginning in the late 1800’s, the Federal Government decided trademark should fall under their purview. Today, most trademark issues are governed by federal statutes, providing uniformity across state lines.

Trademark Types

Not all trademarks are created equal. For definitional and review reasons, courts tend to group prospective trademarks into several categories:

  1. Arbitrary and Fanciful Marks
  2. Suggestive Marks
  3. Descriptive Marks
  4. Generic Marks

The Nike Swoosh is a paradigmatic example of the first category – a white symbol that resembles a check mark has no logical relation to a pair of athletic shoes. Due to that lack of relationship, the Nike Swoosh is very distinctive and so receives a high level of protection under trademark laws.

As for the second category, marks that invoke the customer’s imagination and conjure images of the product are deemed suggestive, and are entitled to diminished protection in comparison to the first category. An example is the trademark name “Blu-Ray.”

The third category refers to marks that are useful in describing the product, such as Kellog’s “Frosted Mini-Wheats.” Descriptive marks are generally not entitled to trademark protection. An exception exists, however, for marks that are advertised and used so extensively that they take on a secondary meaning. This is what occurred with Frosted Mini-Wheats; although the mark began as a simple description of a type of cereal, in the wake of extensive advertising and exclusive use, Kellog was able to demonstrate that, in the mind of the typical consumer, the phrase had come to represent only one brand of cereal.

The fourth category, generic marks, receives no protection at all.

How Do You Get A Trademark?

You can establish trademark protection two ways: (1) by using the mark in commerce, and (2) registering the mark with the Office of Patents and Trademarks.

The first party to use a mark in commerce acquires any rights in the mark, but the protection is limited to the area in which the mark was used. To illustrate, if a corporation based in Philadelphia begins selling shoes in the metropolitan area using a previously unused mark, they would acquire exclusive trademark rights in the Philadelphia area. However, this would not prevent a company from using the mark in another state.

Conversely, the owner of a mark may register it. If the Officer of Patents and Trademarks approves the registration, the mark is protected in all fifty states. If the mark is used for five years after being registered, it is deemed uncontested and may not be challenged.
The company that owns a trademark has the right to protect the mark by filing a suit for trademark infringement. Unlike copyright violations, however, only civil remedies are available for trademark infringement; there are no criminal sanctions.

What Is Trademark Infringement?

Not every use of a mark that is similar to a protected mark is an infringement. In lawsuits for copyright infringement, courts apply a standard known as “likelihood of confusion.” This means that courts will consider whether the allegedly infringing use is likely to confuse consumers as to who is producing the goods or cause consumers to believe that a particular company is endorsing or approving the product.

What Is Trademark Dilution?

In addition to a suit based on the likelihood of confusion, a corporation may also sue based on the doctrine of copyright dilution. A dilution claim is only available if the mark is considered famous. The fame of a mark is assessed according to seven factors:

  1. the degree of inherent or acquired distinctiveness;
  2. the duration and extent of use;
  3. the amount of advertising and publicity;
  4. the geographic extent of the market;
  5. the channels of trade;
  6. the degree of recognition in trading areas;
  7. any use of similar marks by third parties;
  8. whether the mark is registered.” 15 U.S.C. 1125(c).

The advantage of a dilution claim is that it is not necessary to prove likelihood of confusion; the owner of the protected mark need only show that the trademark infringement threatens to either weaken the protected mark through association with other products or damage the mark’s reputation by associating it with other concepts.

Contact A Trademark Attorney

Trademark law is complex, yet those involved in interstate commerce cannot afford to ignore the status of their marketing tools. Without proper trademark protection, a strong product line can quickly become virtually worthless.

Talk to a trademark lawyer today to square away one of your most important marketing tools — your mark.

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