INTRODUCTION TO TRADEMARKS

Introduction

Trademarks and service marks are an essential part of creating a brand.  (Service marks will be included with the comments pertaining to trademarks.)  The following is an introduction to trademarks. I have written other articles pertaining to trademark sub-topics.

Discussion

Trademarks are literally a mark or symbol, word, combination of words, sounds or name that is used to identify your goods or services in the marketplace.  A trademark is not the name of a company, although the mark may be the same as the company name.  A trademark is also not a slogan.  A slogan printed on a tee shirt would be subject of a copyright.  See my article Patents, Trademarks & Copyrights.

Character names, titles, distinctive features of movies or video games may be trademarked if used to promote a product or service. Note that this use is key to determining whether the mark is suitable for trademarking, i.e., is it a mark used to identify a good or service in the marketplace?

USPTO Trademark Registration

Trademarks can be registered in the USPTO.  The Trademark Office maintains a principal register of approved marks.  I would recommend seeking to register your mark on this registry.  The Trademark Office also maintains a Secondary Register. This register provides less protection and is often used to register marks that are deemed merely descriptive. After a period of time, it is presumed that the descriptive mark has acquired “secondary meaning” in the minds of consumers in the marketplace.  If the mark is shown to have acquired secondary meaning, it will then be eligible for registration on the principal register.  

Only marks that have been registered at the USPTO are entitled to be designated with the symbol ®.  Unregistered marks can be designated ™.

Trademark Selection

Care should be taken in choosing a mark.  It should not be merely descriptive of the product.  A descriptive mark cannot be registered on the USPTO Principal Trademark Register.  

Also generic marks cannot be registered.  A generic mark is a word or symbol that commonly used to describe an entire type of product or services, in contrast to distinguishing one manufacturer of the product from others sold in the marketplace.  

You could not register the mark “tires” for automobile and truck tires.  However, you could register the mark “tires” in conjunction with a brand of mattresses.

Words or symbols that are suggestive of the product or services can be registered.  However, the line between what is descriptive versus suggestive is very hard to discern. Suggestive marks are considered “weak marks” entitled to very limited scope of protection.

The best marks, entitled to broad protection and termed “strong marks” are arbitrary words or symbols with no connection to the product of service.  A perfect example is Apple® computers.  An apple is a fruit.  The word has nothing to do with computers.

Coined words (words that have no meaning) are also excellent trademarks.  For example Kleenex® tissues.  Also Exxon® gasoline products.  

Note also that some marks achieve heighten status as “inherently distinctive”.  Such marks are given broad protection.  Products totally unrelated music, computers, phones, etc., could not be registered with the mark Apple.  Note that in would not be possible to register the word Apple in conjunction with radios even if Apple corporation is not selling radios.  In my view, it would be impossible to register a mark containing “apple” for any electronic product or service.  As an inherently distinctive mark, it may not be possible to utilize the mark “apple” for something unrelated as an auto.  

Coined words or the arbitrary use of words are the best trademarks.  I always encourage the use of such marks.

Use of geographic names as part of a trademark is also problematic.  A best, they are weak marks.  Alternatively, they may not be registrable if they would be mis-descriptive of the origin of the products or services.  The mark “Wines of France” would be problematic for a Houston restaurant.  “Fine French Wine” could be acceptable for hair coloring or for a fabric.  “French Nails”, understood to be a style of manicure, would be generic (un-registrable) for a nail salon.

Personal names can be registered on the USPTO principal register only if the use has acquired secondary meaning.  At best, personal names are weak marks subject to limited scope of protection.  It is typically necessary to file the consent of the person named in the mark in order to achieve USPTO registration.  

Summary

I always encourage use of arbitrary or coined word marks.  However, it has been my experience that many initially select marks that are either descriptive or at best suggestive of the product or service.

Copyright David McEwing, 2019