Trademarks 101 Part 1: What Is a Trademark?

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Andrew Stockment is an attorney in Charlottesville, VA. He advises businesses and business owners on a variety of matters, with a concentration on intellectual property, commercial transactions, and business law. Mr. Stockment's additional publications are available at: www.andrewstockment.com.

The term “trademark” is often used to refer to various types of marks, including trademarks (for goods) and service marks (for services), as well as collective marks and certification marks. A trademark is any word, phrase, symbol, design, color, sound, scent, or any combination thereof, adopted and used by a business to identify its goods or services and to distinguish them from those manufactured, provided, or sold by others. Trademark law also protects trade dress (the overall “look” of a product or service, such as the distinctive fluted bottle used by the Coca-Cola Company to package Coke). The owner of a trademark has a limited property right in the exclusive use of the mark.

Trademark rights are created through use, not registration, and such use establishes a business’s common law rights in the mark. Those common law rights protect the owner’s use of the mark in the geographic area where it is used, in the channels of trade in which the products or services are offered or sold, and for those goods and services with which the mark is associated. Such unregistered marks are also protected under some state statutes and under the federal Lanham Act, 15 U.S.C. §§ 1051 et seq. The owners of unregistered trademarks and service marks are entitled to use the TM and SM symbols respectively to indicate their claim of ownership.

In order for a mark to be eligible for protection, it must be distinctive—that is, it must be capable of identifying the source of particular goods or services. Trademarks that are more distinctive receive a wider scope of protection and are, therefore, stronger marks. The distinctiveness of trademarks is measured along a spectrum, of increasing distinctiveness: (1) Generic, (2) Merely Descriptive, (3) Suggestive, (4) Arbitrary, and (5) Fanciful.

A generic term is the common name of a type of good or service, such as pizza and car wash. Generic terms are the opposite of trademarks and are incapable of ever serving as distinctive source identifiers. It is also possible for a trademark to lose its distinctiveness through widespread misuse such that it becomes the generic term for a product (a process known as “genericide”). A mark that has become generic is no longer entitled to protection. Many former trademarks have fallen victim to genericide, including zipper, cola, escalator, and thermos.

A merely descriptive mark immediately identifies or brings to mind the characteristics, qualities, ingredients, composition, functions, purpose, attribute, use, or other features of a product or service. Merely descriptive marks are eligible for limited protection. Examples include Vision Center  (for an eye care facility) and Flat Fix (for a flat tire repair service).

Suggestive marks are words that evoke or suggest some characteristic or attribute of the underlying goods or services but do not describe the goods or services themselves. Unlike a merely descriptive mark, a suggestive mark requires the exercise of imagination to associate the word with the underlying product. Examples include Stronghold (for nails), Coppertone (for tanning products), and Microsoft (for computer software).

An arbitrary mark is a word that has no logical relationship to the underlying product or service, including generic terms applied to an unrelated product. Examples include Apple (for computers and consumer electronics), Penguin (for books), and Comet (for cleaning products). Fanciful marks are the strongest marks. A fanciful mark is an invented word created solely for the purpose of functioning as a trademark. Examples include Exxon, Clorox, Starbucks, and Google.

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