So you’re thinking about getting a trademark? You run a business, or are starting one, and you would like to protect your businesses name or logo. Allow me to introduce you to the world of trademarks. I will lay down the trademark basics and arm you with knowledge that could save you time and money.
Trademark law is a rich and complex field and my hope is that this post will give you a general overlay of that field. It is not meant to delve into the more complex topics that trademark presents. I will address and explain these more convoluted areas in a series of additional posts. Stay tuned.
General Purpose of Trademark
Trademark law’s dual purpose is to avoid consumer confusion and to protect a business’s reputation by guarding it from unfair competition. First, it protects consumers by helping them identify the company that the goods or services originate from—something known as “source-signaling.” Second, it protects a business’s reputation by not allowing another company to take a free ride on the goodwill another company’s brand has established, or from another company tarnishing that goodwill. Your business has spent time, effort, and money establishing a brand, a brand that consumers have come to identify with a certain level of quality and reputation. Trademark law protects that brand and aims to prevent others from profiting off your investment or from shaking your consumer loyalty by tarnishing the quality and reputation of your brand in the eyes of the consumer.
What is a trademark?
A trademark is any word, phrase, slogan, symbol, sound, domain name, design, or a combination of these elements, that helps a consumer identify and distinguish the source of those goods or services. Trademark is not the same as copyright. Copyright protects creative expression in “original works.” It protects works such as books, movies, songs, paintings, photographs, web content, and much more. The purpose behind trademark and copyright, along with what they protect, are very different. The distinction between these two intellectual property fields will be covered in a separate post. For now, let us assume that you are only dealing with trademark law and have settled on your mark.
Not all trademarks are created equal. The level of “distinctiveness” a trademark has determines whether that mark will be protected. The concept of distinctiveness can be understood by examining your mark and how it relates to your goods and services. Your mark will probably fall into one of these five categories—known as the “hierarchy of marks”:
Generic. A mark is generic if it is synonymous or generic for the goods or services that it is used for. Trademark law offers no protection for generic marks, period.
Example: “dirt” for soil or “paper” for paper.
Descriptive. A mark is descriptive if it merely describes the services or goods for which the mark is used. A descriptive mark is given no protection unless it has acquired “secondary meaning.” I will cover this important exception in a separate post.
Example: trying to trademark the term “oat nut cereal” when you sell cereal made from oats and nuts (exactly describes the type of cereal.)
Suggestive. A suggestive mark suggests some quality, nature, or a characteristic of the goods or services for which the mark is used. The mark does not describe this characteristic, otherwise it would be descriptive, and requires some imagination, thought, or perception, on the part of the consumer to identify the nature of the goods. Trademark law protects suggestive marks.
Example: “Chicken of the Sea” (suggests that it is selling tuna, but without using the word tuna).
Arbitrary. A mark is arbitrary if it utilizes a common word, with a common meaning, that is not related to the goods or services being sold. Trademark law protects arbitrary marks.
Example: Apple for computers.
Fanciful. A mark is fanciful if it is invented for the sole purpose of serving as a trademark and has no other meaning. Trademark law automatically protects fanciful marks.
Example: Adidas, Exxon, Kodak.
If this all seems like a bit much, keep in mind that the purpose for not protecting generic and descriptive marks, except for descriptive marks with secondary meaning, is that no company should be given exclusive rights to use a word that is necessary to describe the actual good or service being sold. The drafters of our trademark laws wanted to prevent unfair competition, not all competition.
You may also look at these categories and think, “I’m not sure where my mark fits.” That is okay. The hierarchy of marks is really best thought of as a “continuum of marks.” Your mark may fit somewhere in between categories. Part of our job is to identify where your mark fits along the continuum, what that means for your ability to protect your mark, and what strategies you may be able to adopt so that you can protect your brand.
How do you get a trademark?
Trademarks are protected by both state and federal law. Deciding if and where to register is more complex than it may seem. I will address registration procedures and issues in more detail in a separate post. For now, you should know that while registration has many benefits, it is not required for you to claim legal rights to a particular mark.
Certain “common law” rights exist the day you start using your mark. This means that, if you started using a mark, but have not registered it, it is a good idea to go back and document your first use. Sales receipts, pictures of your product, packaging showing your mark, or advertising featuring your goods or services are particularly useful for this purpose. Generally speaking, common law protection is limited to the geographical area in which the mark is used. This means, if you are only using your mark in Oregon, another company can use that exact mark in a different state to sell the same goods or services. However, if that company attempts to sell its goods or services in Oregon, your common law rights may prevent them from entering your home market or allow you to ask a court to stop sales that are already occurring.
Additionally, you may use the notice symbols ™ or ℠ alongside an unregistered mark to provide notice to the public that you are claiming legal rights to it as a trade or service mark. Note that the ® symbol is reserved for federally registered marks only. Never use it alongside an unregistered mark—not even if a federal registration is pending. Confused? Don’t worry. I will also address marking and notice in a separate post.