Words. Names. Symbols. They're used by manufacturers, merchants and services providers to identify their products and services and distinguish themselves from competitors.
Trademarks and service marks are everywhere. They make up an important part of company's identity and branding.
They can be an extremely valuable part of a business, since consumers often recognize a trademark as standing for a certain level of quality and base their purchasing decisions on that brand identity.
A trademark is a word, name, symbol or device used by a manufacturer or merchant to identify goods that are for sale. A service mark uses the same elements, but to sell services. For this discussion, we'll use the term trademark to refer to both.
Selecting a Trademark
A word, name or symbol can become a trademark only if it is so distinctive that customers can distinguish the products or services that bear the mark from those offered by competitors. The selection of a trademark can be very important in terms of the owner’s ability to obtain registration and prevent others from using the mark. Trademarks can generally be classified into four basic categories:
A generic trademark describes not a specific brand of a product, but rather the whole class of them. That means it's really not a trademark at all. Avoid it. If you develop a type of motor vehicle, you can't choose the word “car” as a trademark and expect to be able to prevent others from using it. Words like "smartphone" or "blender" or "email" or "tablet" are other examples.
Descriptive trademarks simply tell the public what the product is or does. A trademark such as "cell phone" would be considered descriptive. There is generally no way to prevent others who make a similar products identifying them the same way.
This is not to say that either generic or descriptive words cannot be used as trademarks, but rather, no exclusive trademark rights will be created. If you merely wish to describe the products or services you're selling and you're not particularly interested in uniquely identifying your company as the source of that product, the generic and descriptive
trademarks would be perfectly acceptable.
The strength of descriptive trademarks may be enhanced by establishing “secondary meaning,” which indicates consumer awareness of the trademark as an indication of source. That means a trademark is made up of a word that might be interpreted as merely descriptive, but because it has been used as a trademark for such a long time by a particular manufacturer, the public has come to associate that particular mark with the manufacturer in spite of its descriptive quality.
An example is “Kentucky Fried Chicken®” which has come to signify chicken from a specific franchising organization, rather than as descriptive of all fried chicken originating in Kentucky.
Since this particular trademark has acquired “secondary meaning” through use in the marketplace, other distributors of fried chicken, even if they are actually located
in Kentucky, may not use this trademark which is, at first glance, merely a descriptive phrase.
Suggestive trademarks are stronger trademarks, especially if they hint at some quality of the product without actually telling exactly what the product is. For example, the trademark “Hercules” might be a suitable trademark for a variety of goods since it conveys or suggests an image of durability and strength, but does not indicate what the product is that is being offered.
Arbitrary and Fanciful Trademarks
Arbitrary or fanciful trademarks are the best choice from a legal protection view point.
Fanciful marks have absolutely no meaning in the English language prior to their adoption by a particular manufacturer for use with their goods or services. The marks instantly become identified with the particular manufacturer and the exclusive right to use the mark is easily asserted against potential infringers. Some examples of well-known fanciful trademarks: KODAK, EXXON or XEROX.
Arbitrary marks may use words that have a common meaning, but those words have no relation to the products being sold. Apple (as in computers), for instance.
Many Forms, Same Purpose
No matter what form it takes, the purpose of a trademark is to serve as a unique indicator of the origin of a product or service. The goal is to make consumers associate a particular trademark with a particular manufacturer. When a trademark can generate brand loyalty and repeat sales, it has great commercial importance. When choosing a trademark, try to select one that will distinguish your company and brands from competitors.
For most practical purposes, state registration of a trademark is meaningless. Since this area of law is controlled primarily by federal statute, existing state laws do not provide comprehensive trademark protection, if they provide any protection at all.
You cannot obtain federal registration for your trademark until you actually use it on the goods and services you produce. Proper trademark use requires that the mark be placed on the goods directly, or their containers, or displays associated with the goods, or tags or labels that are affixed to the goods. If the mark is used in association with services, the mark must be used or displayed in association with the sale or advertising of the service.
As long as a trademark is being used properly, the trademark rights will last indefinitely, and any federal registration of the trademark may be renewed indefinitely. Proper use of a trademark requires that it always be used as an adjective, and never as a noun. For example, the word “zipper” was once a registered trademark and denoted a particular type of fastener.
Proper use of that trademark would have been to always refer to the fastener as the “zipper fastener” and never simply as a “zipper.” Since this trademark was
used improperly as a noun referring to the fastener itself, the word “zipper” lost its trademark status and simply became the “generic” word identifying a product, thereby giving anyone the right to use the word “zipper.”
Once a trademark has been federally registered, it should be identified either with the word “registered” or with the symbol ®. An unregistered trademark should be identified with the letters ™ placed in close association with the word or symbol which comprises the mark.
Trademark applicants have the option of “reserving” a trademark, without actually having used the mark in commerce, by filing for federal application of trademark. Applicant can apply based upon a good-faith intention to use the proposed mark in commerce within a reasonable period of time. Whether filing based on actual use or proposed use of a trademark, it is best to file an application as quickly as possible.
Consultants at our Small Business Assistance Office can help you understand more about protecting your company's intellectual property. And our network of Small Business Development Centers has experts located in nine main regional offices and several satellite centers statewide.
Our publication A Guide to Intellectual Property Protection provide a deeper look at this important business issue.