WHAT IS A TRADEMARK?
A trademark is any word‚ name‚ symbol‚ logo‚ phrase‚ sound‚ or even smell that identifies the source of goods or services. Common examples of trademarks include the word “Coca-Cola” and the stylized Coca-Cola logo‚ the Quaker Oats logo‚ the Nike Swoosh‚ and “JIFFY-LUBE.” Trademarks can identify the source of any commercial good or product. If a trademark identifies the source of a service provider such as a car mechanic‚ cleaning service‚ or law firm‚ it is known as a service mark. Service marks and trademarks are collectively referred to as “trademarks” or “marks” and receive the same protection. See Types of Trademarks.
While an individual or company may register a trademark‚ registration itself does not create a trademark. A trademark is only born through the use of the trademark in connection with goods or services offered in commerce. When one creates a word‚ logo‚ or slogan‚ that device does not become a trademark until it has been used to identify the source of goods or services in commerce. For instance‚ it was not the invention of the name “Verizon Wireless‚” that created a trademark. Rather‚ the act of continuously offering mobile phone services under that name allowed Verizon to achieve trademark status.
The Purpose of Trademarks
Trademarks serve several purposes. First‚ trademarks enable consumers to distinguish between the different sources of similar goods or services. Trademarks such as “Oral-B” and “Colgate” for tooth-care products allow consumers to differentiate individual manufacturers or sources of these products from one another. By identifying the source of particular goods or services‚ consumers can make purchasing decisions based on which sources they prefer‚ recognize‚ or trust and trademarks allow consumers to avoid sources that they do not trust.
Second‚ by generating goodwill for a particular trademark through advertising‚ promotion‚ or by sustaining a reputation for quality‚ a trademark user can greatly increase their sales. By creating an association in the minds of consumers‚ connecting the trademark with a product‚ a manufacturer can become a “name brand.” Marking similar products in the same market can also boost sales. For example‚ if a consumer prefers Colgate toothpaste‚ they may be more likely to purchase a toothbrush bearing the same “Colgate” mark.
Distinctiveness of Trademarks
Trademarks come in varying degrees of distinctiveness. As trademarks become more distinctive‚ the requirements for registration and trademark protection decrease. For more on distinctiveness requirements for registration‚ see How to Trademark. The weakest or least distinctive trademarks are generic marks. These trademarks are simply the generic name for the product‚ such as light bulb‚ shredded wheat‚ or aspirin. Generic trademarks receive no trademark protection.
After generic marks‚ descriptive trademarks are the most difficult to protect. Descriptive trademarks simply describe the class‚ quality‚ or purpose of the good or service. An example of a descriptive trademark is “Ultra-Clean” for use in relation to cleaning products. Merely descriptive trademarks do not receive trademark protection and are ineligible for registration unless the trademark holder can show that such marks have acquired secondary meaning. Secondary meaning has been acquired when‚ after use with a product‚ the public begins to associate the descriptive mark with the source of the good or service. Secondary meaning can be demonstrated through direct evidence‚ such as consumer surveys‚ or through indirect or circumstantial evidence which includes examining length of use‚ advertising‚ volume of sales‚ whether use of the trademark is exclusive‚ and whether an association exists in the minds of the consuming public between the product and the mark‚ among other factors.
Suggestive trademarks simply suggest a nature of the product rather than describe the product. Suggestive trademarks require that the consumer use their imagination to draw a connection between the product and the trademark. For example‚ the trademark “Coppertone” used for sunscreen may suggest to consumers that the product relates to a tan. However‚ the quality or characteristic of the product suggested is not obvious to the consumer. It requires a second look or use of some imagination.
The strongest type of trademarks are referred to as arbitrary or fanciful trademarks. A fanciful trademark has little to no relationship with the product. Common examples include Exxon and Kodak. These words do not exist in the English language prior to use as trademarks. Though arbitrary and fanciful trademarks are the strongest trademarks‚ some arbitrary or fanciful trademarks have become or are in danger of becoming generic words for their corresponding products. Examples of arbitrary trademarks frequently used generically include Xerox for photocopying‚ Kleenex for facial tissue‚ and even Google for Internet searches.