A trademark is any word, phrase, symbol, logo, or design – or any combination – used to identify and distinguish the source of the goods or services of one party from those of others. A trademark may be a word or words (APPLE or POLO), logos or designs (the Nike swoosh or Adidas’ three stripes), phrases (IT’S FINGER LICKIN’ GOOD or I’M LOVIN’ IT), shapes of containers or other trade dress (the BLANTON’S bourbon bottle shape), or even a color (HOME DEPOT orange) or sound (NBC chimes).
Marks may be broken down into different categories, such as:
- trademarks for identifying and distinguishing goods from those manufactured or sold by others (often applied to actual good or packaging/labelling of said good);
- service marks for identifying and distinguishing the services of one person (typically used in advertising and marketing material);
- certification marks, which are used on or in connection with products or services to certify various facts about them, such as to certify that goods have met certain standards, i.e., the U.S. Environmental Protection Agency’s (EPA) ENERGY STAR or that the goods come from a particular state or region, i.e., GROWN IN IDAHO to certify genuine Idaho potatoes;
- collective marks, which are owned by a cooperative, association or other collective organization and used by members of the collective organization to identify its goods or services and to distinguish them from those of non-members, i.e., FTD, which is owned by Florists’ Transworld Delivery and is used by its member florists to indicate that they belong to the FTD network; and
- collective membership marks, which are used to indicate membership in a collective group such as a trade union or other association, but not used to identify and distinguish the source of goods or services, i.e., AAA indicates membership in the American Automobile Association.
The strength of a trademark may range from fanciful marks that are strong and protectable on the principal register at the United States Patent and Trademark Office (“USPTO”) to generic marks, which are weak and never protectable. A fanciful trademark has no meaning in common language, i.e., KODAK® for film or ADIDAS® for athletic apparel and shoes. An arbitrary trademark has a well-known meaning but is used differently, i.e., “APPLE®” for computers/mobile devices or CAMEL® for cigarettes. A suggestive trademark implies something about a product or service, i.e., TIDE® for laundry or FRIGIDAIRE® for refrigerators and other kitchen appliances. A descriptive trademark identifies characteristics of/serves only to describe a good or service, i.e., AMERICAN AIRLINES® for air transport (unlike the stronger fanciful, arbitrary, and suggestive marks, descriptive marks do not obtain protection solely from their use as a mark but must also acquire distinctiveness based on their use in the marketplace, i.e., “secondary meaning”). A generic mark is not protectable as a trademark as its principal significance to the public is to identify the particular product or service rather than its source, i.e., PIZZA or BEER.
In the United States, one does not have to register their mark either federally at the USPTO or at the state level in order to have rights in the trademark. Rather, common law rights in a trademark exist as soon as the mark is used in commerce on a good or service. However, there are significant benefits to ownership of a federal registration on the principal register at the USPTO, which is indicated by the ® symbol. First, the owner of a registered mark will enjoy protection against confusingly similar junior marks throughout the country, i.e., nationwide rights (as opposed to being limited to the owner’s trading area based on common law rights or state if a state trademark registration is obtained). Furthermore, a federal registration constitutes prima facie evidence of the mark’s validity and serves as constructive notice of the registrant’s claim of ownership. A federal registration also provides automatic subject matter jurisdiction in federal district courts in enforcement and allows for obtaining incontestable status if continuous use is shown over a five-year period, which provides the owner with even more rights.
Stites & Harbison, PLLC’s full-service Intellectual Property & Technology Group regularly assists clients in the acquisition, management, licensing, and litigation of patents, copyrights, trademarks, and trade secrets. For questions, comments, or assistance with any intellectual property-related matters, please contact the author or any of the other attorneys in the IPT group.