WHAT IS A TRADEMARK?

Basically, a trademark is exactly what it says it is; a “mark” used in “trade” to distinguish the goods of the trademark owner from the goods of others. For services, the term is (not surprisingly) “service mark”. A mark may be a symbol, design or word. Frequently a mark is a combination of a word and design.

A trademark is an adjective. It describes a good or service. A trademark is not a noun. It is not the name of the good or service. Remember it is Kodak® pictures, Exxon® gasoline, Xerox® copiers, Apple® computers.

The ® symbol means the mark is registered with the US Trademark Office. The mark may be registered on the Principal Register or the Supplemental Register. The ™ symbol means that the owner is using the word or symbol as a trademark. It does not convey any rights.

It is not necessary to register a trademark. Trademarks can also be registered by the individual states. Some trademark rights are created at the time of first use in commerce. However, significant rights are acquired only by registration of a mark on the Principal Register of the US Patent and Trademark Office.

To be a trademark (or service mark) eligible for registration on the Principal Register of the USPTO, the mark must be distinctive. A strongly distinctive mark is sometimes called a “fanciful”, “arbitrary” or a “coined” mark. Classic examples of coined words (and thereby creating inherently unique and distinctive marks) are Exxon and Xerox. Marks of this type are consider very strong marks entitled to broad trademark protection across all lines of products and services.

Perhaps next on the spectrum of distinctiveness is a fanciful coined word such as Swatch for wrist watches.

Common words may serve as strong distinctive marks when applied in an arbitrary manner to unrelated goods or services. Examples include Apple for computers or Delta for airlines. Obviously the word apple has no meaning related to computers or electronics. Similarly, delta does not describe or suggest anything related to an airplane or air travel.

Next on the spectrum of distinctive marks are suggestive marks. A suggestive word mark requires some mental exercise to make the connection between the mark and the good or service. An example may be Hefty for trash bags or Zip-lock for storage bags. Each word mark suggests some characteristic or aspect of the product. (Note that there is no word “zip-lock” but it is an obvious combination of two common words.)

A suggestive mark can be registered on the Principal Register. It is considered, however, to be a weak mark and not entitled to broad protection (unlike a coined or arbitrary word mark). Trademark protection may be limited to the use of the mark in the same or related lines of goods or service. Also the protection would likely extend to similarly sounding or appearing words for the same product or service.

It is worth repeating that the best trademarks are words or symbols that have no relationship to the goods or services offered. These may be termed arbitrary marks and are usually given the strongest protection in law. Examples may be Exxon (a coined word) for petroleum or Borders (a common word) for books and music stores.

Using marks that consist of a person’s name, a geographic description or readily suggest the goods or service are very weak marks. A word that merely describes the good or service can not be registered on the Principal Trademark Registry. (It can be registered on the Supplemental Trademark Register. However that registration provides almost no protection. Registration on the Supplemental Register does, however, have value as explained below.)

The distinction between a descriptive word mark and a suggestive word mark is very fuzzy and subjective. There is no clear line. Space Station” may be deemed suggestive mark for a self-storage facility. “U Store It” may be deemed merely descriptive. If the examiner determines the mark to be merely descriptive, it will be very difficult to change that determination. Based upon the recent trend in court decisions, an appeal to the courts will not be productive.

Therefore, use some imagination in creating a trademark.

As stated above, a mark that only describes the goods or service are not eligible for registration on the Principal Register of the US Patent and Trademark Office. That does not mean you can’t use the mark in your business. In fact, the mark may be later be registered if it can be shown that the mark has acquired “secondary meaning” in the mind of the public through continued use in business. For example, U-Haul may be considered a mark that merely describes self operated truck rental for hauling or transporting personal property. However, it is a registered and distinctive mark. Through use over time, it has acquired secondary meaning. It is recognized as the mark of a particular company.

This is where the Supplemental Register of the US Trademark Office is valuable. A descriptive mark can be registered on the Supplemental Register. A mark is deemed to have acquired distinctiveness if continuously used for five years after registration on the Supplemental Register. It is then eligible for registration on the Principal Register.

Therefore be creative. Use imagination. Don’t select a mark that has an obvious connection to the proposed good/service. You can save thousands of dollars on legal fees and create a much more valuable asset if you do.