by Shakeria Northcross, Esq.
Which laws govern trademarks?
Initially, state common law solely governed trademark protection. Then, federal trademark law was enacted and has become the main source for trademark protection. To make sure that your mark is protected by federal trademark law, you have to successfully register your mark with the U.S. Patent and Trademark Office. How does the trademark process work? Let's discuss it!
Who can file a federal trademark application; Do I need to sell my services or products before filing a trademark application?
Before a mark acquires the right to be protected by federal trademark law, it must first be used in commerce on or in connection with all the goods and services listed in the application as of the application filing date. Although you may file an “intent to use” trademark application, you are eventually required to show that the mark is being used in commerce before the application can be approved. File your trademark application when you can promptly prove that you are using the mark for your services or products in commerce.
Why was my trademark application rejected; How do I know if my mark is distinctive?
To be considered a trademark, a mark must be distinctive meaning it must be capable of identifying the source of a particular good or service. There are four categories that a mark may fall in when determining its distinctiveness: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. Not only must your mark be distinctive to avoid having your application be rejected, but a thorough trademark search is necessary to ensure that your mark is not confusingly similar to a registered trademark.
What is a generic mark?
A generic mark does not get any protection by trademark law. Generic marks basically identify a particular product or service. For example, “Burgers” is a generic term for a restaurant that sells burgers so that restaurant would not have exclusive rights to use that term with respect to that service.
What is a descriptive mark?
A descriptive mark is protected by trademark law only after it acquires “secondary meaning.” Descriptive marks directly describe, rather than suggest, a characteristic or quality of the product (e.g. its color, odor, or ingredients). For example, “Eyeglasses Center” describes something about the product or service (optical services). Secondary meaning is obtained when consumers mainly associate that particular mark with a particular producer, rather than the product itself. The public would need to associate “Eyeglasses Center” with that particular provider of optical services and not with optical services in general.
What is a suggestive mark?
A suggestive mark is given a high degree of protection by trademark law. Suggestive marks suggest a characteristic or quality of a service or product but requires some imagination to associate the word with the service or product. For example, “Jugar” for a car company suggests that its products (cars) possess the qualities or characteristics of the animal.
What is an arbitrary or fanciful mark?
An arbitrary or fanciful mark is given a high degree of protection by trademark law. Arbitrary or fanciful marks have no logical connection to the service or product at hand. For example, “Kodak” for a camera company has no connection to the products (cameras).
Which marks get the highest degree of trademark protection?
When you are coming up with a name for your business, you are more likely to have your name protected by federal trademark law if it is considered to be a suggestive or arbitrary/fanciful mark. Be creative!