Choosing A Trademark
Purpose of Trademarks
The purpose of a trademark or service mark is to identify goods and services as originating from a single source. Trademarks, in effect, represent the goodwill that a business has built up through its history of offering quality goods and services. Thus, it is vitally important that a trademark or service mark be sufficiently distinctive (a) to identify the business as the source of the goods or services, and (b) to symbolize the business’s goodwill.
Corporate Names
It should be noted that a corporate name and a trademark are not interchangeable. The simple act of incorporating or registering a business name with the secretary of state (or other state or local office) does not provide a business with a trademark. If a corporate or business name is to function also as a trademark, it should be used as a trademark, that is, in an adjectival manner to identify goods or services. It should also possess the same qualities a trademark would necessarily have, namely the ability to identify the business’s goods and services and distinguish them from those of others. Furthermore, listing it on a state’s corporate name registry is not sufficient to guarantee the business’s exclusive rights to the
name/trademark. To ensure exclusive rights, the name/trademark should be protected via either a state or federal trademark registration.
Types of Trademarks
Trademarks and service marks may be divided into five primary categories. These are word marks, design marks, initials and numbers, slogans, and trade dress/product configuration. Although beyond the scope of this paper, sounds, colors and scents may function as trademarks and may now be protected as such under U.S. trademark law.
Word Marks
A word mark is the most common form of trademark and simply consists of a word or group of words. The type of word or words chosen is important because it determines the scope of the mark’s protection. There are a number of different types of word marks and each is accorded a different degree of protection or exclusivity by the courts and the United States Patent and Trademark Office (“PTO”).
Coined word marks — a coined word mark is a combination of letters that has no particular meaning other than to identify a particular good or service. This type of word mark is the strongest choice for a trademark a business can make. A coined word mark is usually registrable on the PTO’s Principal Register (provided it is not considered to be
confusingly similar to another party’s registered mark), and the courts will accord it very broad protection. Examples of coined words include
KODAK, EXXON and PYREX.
Arbitrary word marks — an arbitrary word mark is a word with a definite dictionary meaning that is used to identify goods or services that have no natural connection to that meaning. An arbitrary word mark is also considered to be a strong trademark entitled to broad protection by the courts and the PTO. Like a coined word mark, it is usually registrable with the PTO. Examples of arbitrary marks include APPLE for computer products and CAMEL for cigarettes.
Suggestive word marks — a suggestive word mark consists of a word that has a definite dictionary meaning, but is used in a highly original way to suggest a feature of the particular goods or services it identifies. Because a suggestive word mark involves creative thinking to identify the goods or services, the courts and the PTO usually grant it fairly substantial protection. However, this protection is usually
somewhat less than that enjoyed by coined word marks or arbitrary word marks. Like the above mentioned word marks, a suggestive word mark is usually federally registrable. Examples of suggestive word marks include COPPERTONE for suntan oil, 7-ELEVEN for late night convenience stores, and CHICKEN OF THE SEA for tuna.
Descriptive word marks — a descriptive word mark is a word that immediately identifies a significant characteristic of the goods or services with which it is associated. As a result, the courts and the PTO usually
accord such a mark only very narrow protection. Furthermore, because a descriptive word mark generally indicates something fairly obvious about the goods or services, it is not immediately registrable upon the PTO Principal Register. To be registrable, the proprietor of a descriptive word mark must show “secondary meaning.” Secondary meaning is proven by providing the PTO with evidence that consumers view the descriptive term as an indication of the source of the goods or services and not a mere description of those goods or services. A descriptive word mark may be presumed to have secondary meaning if it has been used continuously over a five-year period. During that five-year period, it is advisable for the proprietor to have the descriptive word mark placed on a special “Supplemental” PTO register. This will put other businesses on notice that the proprietor claims this particular descriptive word as its trademark. Examples of descriptive marks that have acquired secondary meaning would include CHAPSTICK for lip balm and TENDER VITTLES for cat food. In addition, marks that are primarily surnames, such as
MCDONALD’S, are generally categorized as descriptive word marks. As one can see from the trademark use of the surname MCDONALD’S, even descriptive marks can be accorded very broad protection once they have acquired significant secondary meaning.
Generic terms — a generic term is a word that defines the goods or services a business is offering. Such words can never function as
trademarks and are accorded no protection by the courts or the PTO. Examples of generic terms include APPLE for apples or AUTOMOBILE for cars.
Design Marks
A design mark consists of a pictorial or geometric representation that is used to identify goods or services. It can also be combined with words or phrases. Normally, design marks are inherently distinctive and are federally registrable (provided they are not considered confusingly similar to a previously registered mark). Examples of design marks include the portrait of Betty Crocker used to identify cake mixes, and the golden arches design used by McDonald’s to identify its restaurant services. However, design marks can be considered descriptive of the goods or services they are used to identify, or in some cases even generic, in the same way that word marks are categorized. Moreover, there are
certain designs that, by statute, are not registrable, such as the official insignia of the United States or of other countries, states or municipalities, and the like.
Initials or Numbers
Initials and numbers may be registered as trademarks in the same way that word marks are registrable. Generally, initials and numbers lack any intrinsic meaning and are therefore less likely to be considered
descriptive or generic for the goods or services. However, initial and number marks should not be the same as those that identify a government agency (such as the “FBI”) or a government grading system (such as the Department of Agriculture’s “grade A” meat rating). Moveover, the initials or numbers must function as trademarks, and not merely as style or grade designations. Examples of acceptable initial or number based marks include AT&T for communication services, and LEVI’S 501 for blue jeans.
Slogans
Sentences and phrases that are used as slogans or tag lines may also function as trademarks. It should be noted, however, that
because sentences and phrases tend to convey more precise meanings than simple words, they are more likely to be found to be descriptive. As a result, slogans are often more difficult to register than simple word marks. Examples of registrable slogans include Nike’s JUST DO IT, and
McDonald’s YOU DESERVE A BREAK TODAY.
Trade Dress/Product Configurations
Trade dress is the “look and feel” or “total image” of a product or service and can serve as a source-identifier in the same way that more traditional word marks do. Examples include a particularly distinctive restaurant decor (Fuddruckers), or the color, design and texture
container shape may also be protectable as a trademark, provided the public perceives the shape or design as identifying and distinguishing the source of the goods. Examples include a distinctive bottle shape such as the Coca-Cola bottle, the Haig & Haig “pinch” bottle, a lamp design, etc. To be protectable, trade dress must be nonfunctional (i.e., it must not be essential to the use or purpose of the article or affect the cost or quality of the article); and inherently distinctive or distinctive by virtue of secondary meaning. In the case of product design trade dress, however,
distinctiveness must always be shown through proof of secondary meaning. The PTO is increasingly granting federal registration to trade dress or product configurations that meet these standards.
Availability of Trademarks
In addition to the characteristics of the mark itself, a second factor that is very important in choosing a trademark is its availability. In the United States, rights to a trademark may be acquired simply through use. Such “common law” rights entitle the business that began using a mark first to prevent others from adopting similar marks in the same geographic area or in areas of natural expansion of use. A business that obtains a federal registration for its mark has exclusive rights to the mark
throughout the entire United States for any goods or services that are the same or similar to those it offers. If a mark has previously been registered, or is currently being used by another business, for goods and services that are similar to those offered by the potential applicant, the mark is probably not available for federal registration. Indeed, whenever a business uses a mark in the face of a previously existing similar use or federal registration, it may be liable to the senior registrant or user for trademark infringement. Even if none of the previously existing registrations or uses is used in connection with similar goods or services, a business may be well advised to choose another mark if its original proposed mark has been used widely throughout the U.S. business community. As the number of similar marks increases, the scope of protection accorded that mark by the courts and the PTO narrows. For especially common marks, it is likely that each business using the mark will only be accorded very narrow protection based on the exact goods and/or services with which it has used the mark, and thus is considered a mark with weak trademark significance. Moreover, with the passage of the Federal Anti-Dilution Act in 1996,
senior users of marks that may be considered “famous” have another weapon in their arsenal to prevent junior users from using their marks in unrelated areas.
The process of choosing an appropriate trademark is complicated and takes time. To avoid legal pitfalls, a business should work with trademark legal counsel to assure that the mark or name it selects is available and federally registrable. To determine the availability of a given trademark or service mark, a search both of the PTO records and of certain common law databases should be conducted. With entry into the Madrid Protocol, trademark owners are well advised to search
international registrations and applications filed in the European community as well. Legal counsel should review the search report and provide an opinion as to the availability and registrability of the proposed mark. If the mark is available and registrable, it may be advisable to file an application for federal registration based on intent to use the mark in commerce (or based on actual use, if appropriate). The filing date becomes the “constructive use” date of the mark once it is registered. Thus, it is important to file an application with the PTO as soon as possible once a decision has been made to go forward with the mark.
Sutherland Asbill & Brennan trademark attorneys and paralegals would be happy to work with you to protect your company’s valuable trademark rights. If you have any questions or would like assistance on a particular trademark matter, please contact us.
