October 30, 2018



What is a Trademark

What is a Trademark?

Official Seal of a registered Trademark

A trademark is something which is used to distinguish goods or services of one company from another and allows customers to identify the company's products or services.  A trademark or service mark is often referred to as a brand or logo.  It can be a word, phrase, symbol, sound, scent, color and/or design that identifies and distinguishes the goods/services of one company from another.  Consumers like to buy products and services from companies they know.  Companies like to have customers buy their products or services.




Trademarks are often a company's most valuable asset.  Many company’s invest in an identity which is readily recognized by consumer and helps differentiate it from its competitors.  This is often referred to as its brand identity or good will. Legally, this is typically referred to as a trademark or service mark.

Many businesses invest their time and money into developing a brand name which is readily identified with the type of goods or services a business provides; the law protects that investment as a Trademark or Service Mark. A Trademark is another name for brand name and is used to identify the source of a good.

A trademark is used when a consumer goes shopping and looks for a particular product.  The consumer will often choose a brand they are familiar with because they like the brand and trust the products from that brand. That's what a trademark does.  It helps a consumer recognize a brand and make a purchasing decision based on their familiarity or understanding of the brand. The trademark helps the consumer identify the source of the product and distinguishes them from the shoes of another manufacturer.

To obtain federal trademark rights, you must register a trademark with the Trademark Office. 

A service mark is just like a trademark but it is used in connection with services while a trademark is typically used in connection with goods.  A Service Mark is a name for a brand name used to identify the source of a service. Some common brand names for service related companies include H&R Block, Google and American Express.

Although "trademarks" are legally different from "service marks" many people informally refer to a service mark as a trademark.

The term Trademark often refers to both trademarks and Service marks.

What is the Benefit of Registering a Trademark?

Why register a trademark?  By simply using a mark in commerce you get what are called common law rights.  That means that you don't have to register a trademark to obtain some legal rights.  However, these rights are limited and if you plan on using the brand to create value for your company or to stop others it is better to have a registration, especially a federal registration.  While you may not need to hire an accountant to look after your books or file your taxes, if you do hire one, you may get a lot of benefits from doing so.  The same is for filing a trademark, you may not need to hire an attorney to file a registration, but doing so will typically provide more benefit to you or your company than not doing so.

If you do hire an attorney to register your trademark you may receive enhanced trademark rights:

Official Seal of a registered Trademark

  • If your mark is federally registered the Trademark Office will reject later applicants from register a mark which is similar to your mark;
  • You may also be able to a a Judge to help you stop a new user from using a mark which is similar to your registered trademark;
  • You also get the right to use the trademark registration symbol: ®; and
  • You will get the right to file a trademark infringement lawsuit to prevent use by others and request that the infringer pay money.  In some cases the court will award treble (3x) damages and attorney's fees.

Registration on the Principal Register for more than 5 years may also provide additional benefits, including a presumption that your trademark is valid that you are the owner of the mark, and that you have the exclusive right to use the registered mark.  These can be very helpful if you ever have to stop someone from infringing your trademark by filing a lawsuit to stop them.  The registration on the principal register may also provide proof to eliminate any defenses raised by an infringer that their use was justified or in good faith.  Federal Registration of your trademark also provides priority of use throughout the United States.

To be registerable, a trademark must be capable of acting as a source identifier.  Common terms like Grocery Store or Shoe Store are not very distinctive.  They are used by most people as a description of where they are shopping.  They do not by name alone, indicate which Shoe Store or which Grocery Store they are going to shop.  If a mark is not distinctive enough to act as a source identifier, the United States Trademark Office may refuse to register the mark on the principal registry until the mark has sufficient recognition that it is capable of acting as a source identifier to consumers.

Within the trademark world, trademark distinctiveness varies over a range or spectrum.  At one end of the spectrum the trademarks are unprotectable and at the other end they are very protectable.    The more distinctive a trademark is, the easier it is to register and protect.  Also, the higher up in the distinctiveness spectrum, the more protection that it receives under U.S. law. 

In order of weakest to strongest, marks are categorized as:

Generic Marks

Generic trademarks are not protectable.  They are typically terms which are used to describe a product or service.  For example, a brand of beer called "BEER" is generic. Generic trademarks are words which are used to describe the product or service and are often synonyms for the goods or services.  For example, think about the terms Kleenex, Thermos, Xerox they each (at one time) were generic terms for what they were, tissues, insulated liquid containers and copies.   Generic marks are not protectable because no one can own the exclusive right to describe a good or service.

Descriptive Marks

Descriptive marks (or more properly, "merely descriptive marks") are marks which describe the services or goods on which the mark is used.  Descriptive Marks are difficult to register on the Principal Registry.   One example of a descriptive mark is, Tire Store for a store which sells tires.

If a mark is merely descriptive it does not identify the source of the goods or services. If a mark does not act as a source identifier, it can not function as a trademark and thus it can't be protected as a trademark.  Misdescriptive marks are equally weak. Typically, if it appears that a descriptive marks can function as a source identifier, the trademark office may allow for the mark to be registered on the Supplemental Register instead of the Principal Register.

Over time, with extensive use and by building consumer recognition, descriptive marks can become distinctive by achieving secondary meaning. Secondary meaning generally means that although the mark may be a description of the goods or services, consumers recognize it as a brand indicating a source of the product and not merely as a description of the goods or services.  Secondary meaning can be shown through long term use, or extensive marketing activities including substantial advertising and publicity activities. In some cases, proof that the mark has acquired secondary meaning can be shown through the use of consumer surveys, that show that consumers recognize the mark as a brand as opposed to a description.  If a mark has sufficient consumer recognition, the registrant can move the registration from the Supplemental Register to the Principal Register.

Suggestive Marks

Suggestive marks are generally distinctive and protectable.  Suggestive marks suggest a quality or characteristic of a good or service.  For example, PAYLESS for a grocery store.  The mark is suggestive because it suggests that you might pay less for items at a PAYLESS grocery store than you might at another store.  Suggestive marks require some imagination, thought, or perception to reach a conclusion as to the nature of the goods. Suggestive marks are more distinctive than descriptive marks where a descriptive mark goes straight to the conclusion, CHEAP GROCERY STORE, and doesn't require any thought or imagination.

Arbitrary or Fanciful Marks

Arbitrary and Fanciful marks are very strong marks and are considered very distinctive.  They are at the opposite end of the spectrum from generic marks and are considered the most easily protectable of marks. 

Fanciful marks are marks which are made up words and have been created for the sole purpose of identifying a brand.  They typically have no meaning in dictionary and solely function as a trademark.  Fanciful marks are considered to be the strongest type of mark. An example of a Fanciful Mark is EXXON or XEROX.

An arbitrary mark is a mark which is already known but as applied to the goods or services has no meaning or relation.  Arbitrary marks are considered to be a very strong distinctive mark, just under Fanciful Marks.  Examples of arbitrary marks include APPLE for music and computers.