What Is A Trademark?
A trademark is a “word, name, symbol, device, or combination” of these that an entity uses to identify and distinguish its goods from those of others. A service mark is similarly defined, but is used to distinguish services. The term “mark” includes both trademarks and service marks. Titles, character names, or other distinctive features of movies, television, and radio programs can also serve as marks when used to promote a product or service. Once a mark is established, the owner is entitled to its exclusive use. For example, the name “Chanel” and the overlapping double “C” symbol have value because people associate them with Chanel®’s products and all of the luxury and quality and trust that the company has built over the years.
To register and obtain benefits of registration under federal trademark law, an applicant files an application with the U.S. Patent & Trademark Office (“USPTO”). A mark can be registered if it is currently used in commerce. An applicant can also file an intent to use application if the applicant intends to put mark into practice within six months, although subsequent extensions are available and registration is required. A registration is effective for ten years and renewable every ten years. After the initial registration, however, the mark’s owner must file an affidavit demonstrating continuous use in commerce between fifth and sixth years after the initial registration. World-wide trademark registration and management is complicated because trademark rights are solely territorial in scope. Each country has its own laws and registration systems. Some countries, for example, grant trademark rights based on a first to use in commerce basis and other countries on a first to file basis. Generally, to obtain global trademark protection, the rights have to be acquired individually on a country by country basis, although treaties, such as the Madrid Protocol, provide a means to coordinate registrations.
Trademark law gives the most protection to distinctive names, logos, and other marketing devices. In decreasing order of distinctiveness are marks that are: (1) arbitrary and fanciful; (2) suggestive; (3) descriptive; and (4) generic. Arbitrary marks can be commonly used words that have no relationship to the goods or services they are associated with. Fanciful marks are typically made-up names. Suggestive marks suggest a good or service without actually describing them. Descriptive marks describe a product or service, such as the purpose, quality or geographic origin. Generic marks merely describe the type of product or service. Distinctive marks include arbitrary, fanciful and suggestive marks, which are registerable with the USPTO without demonstrating that the mark has acquired a “secondary meaning” in the market. Descriptive marks, however, may only be registered if a “secondary meaning” has developed through sales and advertising and can be demonstrated by the applicant’s substantially exclusive and continuous use for five years. Competing uses of marks are generally resolved in favor of the owner to first to use the mark in a category or within a geographic area. The test used to determine whether one company’s mark infringes that of another is whether the use is likely to cause confusion, mistake, or deception among the relevant consuming public. In the test, actual confusion is not necessary. It is likelihood of confusion that is measured. In Trademarks 102 (Part 2 of this series), trademark limitations, infringement and importance of registration will be explored.