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Trademark law basics: Featured Article

What is a trademark?
A trademark is a word, symbol, or phrase that is used to identify a particular manufacturer or seller's products and distinguish them from the products of another manufacturer or seller. For example the trademark "Nike" and the Nike "swoosh" are both used to identify shoes and other products that are made by Nike and to distinguish them from shoes and products that are made by another company. But if a mark is used to identify a service rather than the products, such as "Jiffy Lube", then they are called service marks, but they are treated the same as trademarks.

In some cases trademark protection can extend beyond words, symbols, and phrases to include other aspects of a product, such as its color or its packaging. A good example of this is the unique shape of the Coca-Cola bottle that serves as an indentifying feature. These types of features usually fall under the term "trade dress" and they can be protected if consumers associate that feature with a particular manufacturer rather than the product in general. But these features will not be protected if they have any type of functional or competitive advantage. What this means is if the bottle is easier to stock or easier to grasp because of its design it cannot be protected under the "trade dress" laws.

What sources of law govern trademarks?
No matter what kind of trademark you are applying for they are governed by both state and federal law. In the beginning, state common law provided the only source of protection for trademarks. But in the late 1800s, the United States Congress enacted the first trademark law for the federal government. And every since that has happened the federal laws for trademarks have done nothing but expand, and they have also pretty much taken over the area that was initially covered by state law. In fact the main federal statute is the Lanham Act, which was enacted in 1946 and was just recently amended in 1996.

What prerequisites must a mark satisfy in order to serve as a trademark?
The main thing that needs to happen in order for a mark to serve as a trademark is that the mark must be distinctive, which means that it must be capable of indentifying the source of a particular good. But in order to determine if a mark is distinctive the mark has to fall into one of four categories, which is based on the relationship between the mark and the underlying product. But because the marks in the various categories are going to vary in their distinctiveness the requirements and the degree of legal protection that is offered each trademark is going to vary based on which category it fits in.

Helpful Resources:
1. Trademark Law Basics
This website provides you with a very detailed outline of everything that you need to know about trademark laws. The website also provides you with other articles on trademarks that you might find useful.

2. Overview of Trademark Law
This website provides you with answers to frequently asked questions in regards to trademark laws, including what sources govern trademark laws and what a trademark is.

3. Basic U.S. Patent, Trademark and Copyright Information
This website provides you with a list of the various contents that are available for you to look at in regards to patents, trademarks and copyrights. Each topic has a link that you can click on to obtain detailed information.

4. Trademark Law Page
This website takes a look at applying for a trademark and other basic information on trademarks from an artist's point of view. It is a great resource for people who are interested in trademarks for their artistic work, such as comic book illustrators, etc.

5. Trademark Basics
This website covers a variety of articles on trademark law, including what the purpose of trademark law is, what you need to know about trademarks, and many other useful topics on trademarks in general.

6. All About Trademarks
Rather than provide you with an article or articles on the various aspects of trademarks this website provides you with a table of contents that breaks down information on trademarks into various categories. The table allows you to click on a link to be taken to even more resources on that specific topic.

7. Trademarks
This website belongs to the United States Patent and Trademark Office and provides you with everything that you need to know about trademarks and patents. The website is very helpful and provides you with other resources that you might find useful.

8. Trademark Law Basics
This website provides you with clear and simple answers to various questions about trademarks. The website does not go into long legal explanations but rather puts the answers into laymen's terms so everybody can understand them.

9. Practical and Legal Fundamentals of Intellectual Property
This article was designed for lawyers and law students to use for information on trademarks and the laws that apply to them. But in this article there is also a link that you can follow for more basic information if you are neither a law student nor a lawyer.

10. The Arther Law Firm: Trademark Basics
This website belongs to a lawyer that specializes in trademark law. The website provides you with the basic information that you need to know and gives you an idea on why you might need a lawyer for trademark cases.

Here is some basic information on the four categories:
  • Arbitrary or fanciful - this is a mark that has no logical relationship to the underlying product, but these marks are inherently distinctive and are given a very high degree of protection. Examples of these types of marks would be the words Exxon, Kodak, and Apple

  • - Suggestive - this type of mark actually evokes or suggests a characteristic of the underlying product.These marks are very distinctive and are also given a very high degree of protection. A great example of this type of mark would be the word "Coppertone". This word is suggestive of sun-tan lotion but doesn't actually describe the actual product. With this word you need to exercise some imagination to associate the word with the product, but at the same time the word is not unrelated to the actual product.

  • - Descriptive - this type of mark directly describes a characteristic or quality of the actual product rather than suggesting a characteristic or quality. But these marks are not very distinctive so they are only protected if they have acquired "secondary meaning". The reason that they have to clear this additional hurdle is because they are terms that are useful for describing the product so if the manufacturer was given the exclusive right to use the term it could give them an unfair advantage. But in order for the mark to acquire secondary meaning the consuming public must primarily associate that mark with a particular producer rather than the actual product. An example of this type of mark would be "Holiday Inn" because they tell us something directly about the product. This term has acquired secondary meaning because when people hear that word they think of a provider of hotel services, a company that provides hotel services, but they don't think of hotel services in general.

Here are the factors that the courts consider when trying to determine if a term has acquired secondary meaning:

  • The amount and manner of advertising

  • The volume of sales

  • The length and manner of the term's use

  • Results of consumer surveys

  • Generic - this type of mark is one that describes the general category to which the underlying product belongs. These types of marks are not entitled to any protection under trademark law.

The reason for this is that these terms are simply too useful for indentifying a particular product. So by giving a single manufacturer control over that term would be to give them a great competitive advantage. A good example of this type of mark would be the term "Computer" which is used to describe all types of computer equipment. But something else you need to know is that in some cases terms that were not originally generic can actually become generic, which means that they are no longer protected under trademark laws.

How do you acquire rights in a trademark?

As long as the trademark qualifies for protection you can acquire the rights to a trademark in one of two ways.

Here are the two ways to acquire trademark rights:

  1. Being the first to use the mark in commerce - this usually means that you actually have to sell the product to the general public with the mark attached. But this is actually limited to the geographic area that you are selling your product in, along with any areas that you would be expected to expand into or any areas where the reputation of the mark has been established.
  2. Being the first to register the mark with the U.S. Patent and Trademark Office - this method requires that you have a bona fide intention of using the mark in commerce. Another advantage to this method is that it gives you the right to use the mark nationwide, even if you only plan on selling the product in a small area. But this right is limited to the extent that the mark is already being used by others within a specific geographic area. If that is the case they still have the right to use the mark in that original area, but you now have the right to use it everywhere else.

What does it mean to register a trademark?
Although you do not need to register a trademark in order for it to be protected there are many benefits that you can receive if you take the time to register your trademark.

Here are some of the benefits you can receive if you register your trademark:

  • Gives you the right to use the mark nationwide, but subjected to certain limitations

  • - Registration constitutes nationwide constructive notice to others that the trademark is owned by you

  • - Enables you to bring an infringement suit in federal court

  • - Allows you to potentially recover treble damages, attorney fees, and other remedies

  • - Registered trademarks can become "incontestable" after 5 years, which then means that the exclusive right to use the mark is conclusively established

Can trademark rights be lost?
In general yes trademark rights can be lost, but in order for them to be considered lost they must be lost in a specific way. Here are the various ways that trademark rights can be lost:
  • Abandonment - this happens when the use of a trademark is discontinued with no intent to ever resume its use. Keep in mind that the intent of no longer using the trademark can be inferred from the circumstances. Also if you do not use the trademark for a period of three consecutive years this is also considered abandonment

  • - Improper licensing or assignment - improper licensing is when a trademark is licensed without adequate quality control or supervision by the trademark owner, this ends up in the trademark being cancelled. But the trademark will also be cancelled if the rights are assigned to another party in gross, without the corresponding sale of any assets. The reason for these rules is that in these situations the trademark is no longer serving its purpose of identifying the goods of a particular provider.

  • - Genericity - this is when the trademark was originally distinctive but over time has become generic. This will happen when in the minds of the majority of the consumers the word denotes a broad genus or type of product and not a specific source or manufacturer.

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