What is a Trademark?

The United States Patent and Trademark Office (“USPTO”) defines a trademark as any word, phrase, symbol, design, or combination of those that identified a good or service. The term trademark can be used to refer to two types of marks: (1) a trademark, used for goods, and (2) a service mark, used for services.

Requirements

A valid trademark must satisfy three requirements: (1) distinctiveness, (2) non-functionality, and (3) use in commerce.

Distinctiveness

A trademark is distinctive when the mark serves to distinguish your goods and/or services from those of another. Trademarks are considered inherently distinctive if they are fanciful, arbitrary, or suggestive. Common examples of fanciful trademarks are those made up or coined specifically for use as a trademark (i.e., “Xerox”). Arbitrary trademarks are real words or phrases that do not relate to the good or service. (i.e., “Apple” for a computer/technology company). Suggestive terms are those that do not simply describe the product but suggest the qualities and/or purpose of the product (i.e., “Coppertone” sunscreen). Given that these three types of marks are inherently distinctive, they are protectable.

Descriptive marks are those that describe the service or good. These marks can be similar to suggestive marks, however they are primarily or wholly descriptive of the good or service, rather than suggestive of qualities. Descriptive marks are only protectable if consumers come to associate the mark with a specific good/seller. This understanding by consumers is often referred to as “secondary meaning.” “Holiday Inn” is an example of a descriptive mark that has obtained a secondary meaning with consumers, rather than just describing an inn, and has become protectable.

Finally, there are generic marks. These are marks that simply name the type of product (i.e., “apple” for an apple). Generic marks are never distinctive, therefore, cannot be protected.

Non-Functionality

A trademark cannot include functional aspects of a product. Protection for functional aspects of a product may be obtained through a patent, although there are various other requirements that must be met to secure a patent which are beyond the scope of this article.

Use in Commerce

The final requirement is that the trademark must be used in commerce. This means the mark must be used to sell, advertise, or offer your product and/or service to the public. Due to this requirement, if a trademark owner stops using their trademark in commerce (or stops enforcing protection of their trademark), the mark can be considered abandoned. If this happens, the trademark is no longer protected.

However, there is an exception to this requirement. An “intent-to-use application” can be filed with the USPTO prior to a mark being used in commerce. This allows an owner to obtain protection for a mark when they have a good faith intention to use it in the future, but have not used in commerce yet.

Ownership vs. Registration

Ownership of a trademark is different than having a registered trademark. Someone has ownership of a trademark as soon as they use the mark in commerce with a good or service. Registration of a mark is obtained by filing a owned mark with the USPTO for trademark registration.

Ownership of a mark grants the owner with limited rights in the mark. As stated above, these rights are granted once the mark is used in commerce, but they are limited to the geographic area the goods or services are provided. This means that ownership alone does not grant nationwide protection.

While you are not required to register a trademark, registration provides for broader and stronger protections. Specifically, registration grants nationwide protection for a trademark, not just local protection. A registered mark also provides the registered owner of the mark with the legal presumption of ownership and exclusive right to use the mark in the event an infringement issue is raised.

What Can and Cannot be Protected?

Given the requirements of a trademark, there are categories marks that can be protected, and categories of marks that cannot be protected. The most common protected marks are brand names, product names, slogans, and logos. In addition to these marks, color schemes (i.e., UPS brown) and smells (i.e., the smell of Play-Doh).

In contrast, common categories of marks that cannot be protected include marks that are already in use or too similar to a mark already in use, generic descriptive words, and commonly used phrases and messages. The inability for these marks to be protected makes sense when considering the requirements for a trademark. These types of marks would all fail the distinctiveness requirement.

Trademarks are an important consideration for one’s business. A registered trademark provides the owner with the most protection, and helps guard against counterfeiting and fraud. When building a recognizable brand, registration of a strong trademark that will identify that brand should be pursued.