A trademark is any word, slogan, or symbol that is used in trade with goods and services to indicate their source of origin. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from offering the same goods and services under a non-confusing mark. There are generally four different types of marks:
• merely descriptive; and
• generic (note, generic words are not entitled to protection).
Fanciful marks are devices which have been invented for the sole purpose of functioning as a trademark and have no other meaning than acting as a mark (i.e., KODAK®, XEROX®, and EXXON®). An arbitrary mark utilizes a device having a common meaning that has no relation to the goods or services being sold (i.e., APPLE® (for computers)).
A suggestive trademark is a word that, when applied to the products or services, requires imagination, thought, or perception to reach a conclusion regarding the nature of those goods or services (i.e., REDLINE® (suggestive for an energy drink giving you potent ingredients), MICROSOFT® (suggestive for microcomputers), and MICRODERMABRASION IN A JAR® (suggestive for a face cream that sloughs off dead skin)). On the other hand, a merely descriptive mark immediately conveys information regarding an ingredient, quality, characteristic, function, feature, purpose or use of the product or service and is not entitled to protection (i.e., LIGHT (descriptive of a light beer), ZERO CARB (descriptive of a dietary supplement that has zero carbohydrates), and SUPERPUMP (descriptive of a dietary supplement that pumps muscles). Most marks fall into the suggestive (protectable) or merely descriptive (not protectable without secondary meaning) categories. While it is tempting to select a descriptive mark because it more readily communicates the nature of the goods or services provided, they not immediately entitled to protection. Merely descriptive trademarks are only entitled to protection upon proof of secondary meaning, i.e., 5 years of continuous use, consumer surveys, extensive sales, and/or extensive advertising.
In the United States, trademark rights are either common law (based upon use) or registered rights. Common law rights are limited to the geographic area where the trademark has been used. Registered rights are obtained by filing a trademark application with the United States Patent and Trademark Office (“PTO”). An applicant can secure its rights before it uses them by filing an intent to use application with the PTO. Registration with the PTO provides many benefits, such as:
• prima facie proof of the validity of the trademark;
• the exclusive right to use it in all fifty states;
• the registrant’s ownership of the mark; and
• after 5 years, the ability to make the mark incontestable and not subject to attack or cancellation (with some exceptions).