Trademarks Generally

TYPES OF TRADEMARKS

A trademark is a word, logo, or package design that identifies goods and distinguishes them from others. These are all types of marks:

§ Brand Names (DOLE for pineapple)

§ Trade Dress (the shape of a Coca-Cola bottle)

§ Service Marks identifying services (MCDONALD’S for a restaurant service)

§ Certification Marks (ORGANIC for organic products)

§ Collective Marks identifying goods, services, or members of a collective organization (NATIONAL CHEERLEADER’S ASSOCIATION for cheerleading squads)

For the purposes of this website, the term ‘trademark’ is used to collectively refer to all types of marks.

SCOPE OF PROTECTION

1. Arbitrary/fanciful

§ When a familiar word is applied in an unfamiliar way or a word is made up that did not exist before.

§ Automatic trademark protection upon use in commerce; these receive the highest level of trademark protection.

2. Suggestive

§ A term is suggestive if it requires imagination, thought, and perception to reach a conclusion as to the nature of the goods.

§ Automatic trademark protection upon use in commerce.

3. Merely descriptive

§ A descriptive mark conveys an immediate idea of the ingredients, qualities, or characteristics of the goods.

§ No trademark protection unless the mark has acquired secondary meaning.

4. Generic terms

§ A generic term is descriptive of an entire class of things that have the same qualities.

§ Generic terms are not protected as trademarks.

TRADEMARK RIGHTS

There are two methods of obtaining trademark rights:

1. Common Law Rights: simply by using a mark in connection with goods automatic trademark rights can arise in the geographic area of use.

§ These trademark rights arise through use and continue as long as the mark is used in interstate commerce. 15 U.S.C. §1127

2. Registration with the U.S. Patent and Trademark Office: Registration with the USPTO establishes nationwide rights in the mark.

§ In order to qualify for registration, a trademark must meet two criteria:

i. It must be distinctive. (The mark must distinguish the goods made by one person from those of another person); and

ii. It must not present a likelihood of confusion with another mark. (The mark cannot resemble a previously registered mark so much that it causes confusion, mistake, or deceives.)

§ Trademark registration on the Principal Register is prima facie evidence of the validity of the mark and of the owner’s exclusive right to use the marks. 15 U.S.C. §§1057(b) and (a).

QUICK FACTS

§ Trademark rights continue indefinitely as long as the owner does not abandon the mark or permit it to lose significance by becoming generic

§ Trademark rights are based largely on priority of use.

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