Posted by Admin Saturday, March 24, 2012 8:35:00 PM

by Brenda L. Speer

What is a trademark? The purpose of a trademark is to indicate the source or origin of a good or service. A trademark may be a word, symbol, name, device or any combination thereof. A trademark owner has the exclusive right to use his trademark in conjunction with his particular goods and services.

In the United States, trademark rights begin to accrue as soon as you use your mark in commerce in connection with your goods and services. This is known as common law use and in this instance your trademark rights will extend only to those geographic areas in which you can prove active trade in commerce has occurred. The next rung up the ladder of trademark protection is a state trademark registration.

A state trademark registration may be obtained for each state in which the mark is used in commerce and carries the evidentiary presumption that you are using your mark throughout the state(s) in question. Provided you are trading in interstate commerce (doing business in at least two states), you can go to the top rung of the ladder of trademark protection and pursue a federal trademark registration, which carries the evidentiary presumption that you are using your mark throughout all 50 states and the US territories.

Trademarks should be appropriately marked with notice of ownership. This is where the trademark alphabet comes into play. A federally registered trademark is marked with the circle R symbol, ®.

Trademarks subject to either common law use rights or a state registration(s) are marked with either SM (indicating a service mark, or another way of saying a trademark which is used in connection with services) or with TM (indicating a trademark which is used in connection with goods). To use ® in connection with a trademark, you must have a federal registration. The use of SM or TM in connection with a trademark requires either common law use of the mark or a state registration.

Only trademarks which are descriptive, suggestive, arbitrary or fanciful (in order of increasing legal strength of a trademark) are entitled to legal protection. Generic terms (the word for the good or service itself) are not entitled to trademark protection, because these terms must remain available for all to use in identifying their goods or services. Examples of generic terms are telephone, car, dry-cleaning, etc.

The legal strength of a trademark is often inversely related to the appeal of the trademark to your marketing team. Why? Because of the ability of the trademark to instantly convey to a consumer what the good or service is. As you’ll see in the discussion which follows, descriptive marks require no consumer education, suggestive marks require some consumer education and arbitrary or fanciful marks often require extensive consumer education. The marketing plus of a legally strong trademark though is the increased value and heightened awareness in the marketplace of your brand.

A descriptive trademark describes the nature or quality of the goods or services and is subject to limited legal protection; provided the owner can demonstrate the trademark has secondary meaning, meaning the public has come to identify the descriptive trademark with a particular source. An example of a descriptive trademark is Half Price Books® for retail store services featuring books. See the immediate connotation to the consumer? Inexpensive books. No explanation needed.

A suggestive trademark suggests the nature or quality of the goods or services. Examples of suggestive trademarks are Coppertone® suntan oil and Edge® shaving cream. These marks have a less immediate connotation to a consumer, but do readily convey that Coppertone suntan oil will give them a nice, perhaps unhealthy, tan and that Edge shaving cream will give them a smooth, close shave.

An arbitrary trademark applies an existing term with intrinsic meaning in a different context. Examples are Apple® computers and Palm® PDAs. Without the advertising campaigns that went along with these product launches, the consumer would have no idea what either an Apple or a Palm were. These trademarks were worth the effort and, as a result, are very strong marks in the marketplace. We all have a different perception of an Apple computer versus a Dell® PC and of a Palm versus a Blackberry®.

A fanciful trademark is coined anew for use as a trademark: it is a word that didn’t exist before. Examples are Exxon® gasoline and Kodak® film. Imagine the consumer education that Kodak had to undertake when it went into business—not just for its Kodak brand, but also for the film and photography industry. Again, the effort was worth it: look at how strong its brand and trademark are today.

A trademark should always be used as an adjective, never as a noun, verb, plural or possessive. Trademarks are properly recited as: brand . In common parlance, the word “brand” may be dropped, but the trademark should still be paired with a noun. For example, you blow your nose into a Kleenex® brand tissue or wear a pair of Levi’s® jeans. Conversely, you don’t Rollerblade® in the park (misuse as a verb; proper use would be skating with a pair of Rollerblade in-line skates), and you don’t make a Xerox® of a document (misuse as a noun; proper use would be making a copy with a Xerox photocopier).

It is the responsibility of the trademark owner to maintain and enforce his trademark rights. If he doesn’t, he risks losing those rights. There are no trademark police. You alone are responsible for ensuring your trademark is used properly and enforcing your trademark rights against infringers.


© 2008 BL Speer & Associates

BL Speer & Associates
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