Have you ever been watching a commercial or seen a product in the grocery store that had a tiny “TM” or “R” with a circle around it next to a product name on a label or bottle? Of course you have, which means you know in general what a trademark is. In this blog post, we’re going to dig a little deeper and break down what trademarks are and the various forms they take.
So, what is a trademark? A trademark is a word, symbol, or phrase that is used in commerce to identify the origin of a particular product or service, and help consumers distinguish it from its competitors. For a trademark to register, it must meet two guidelines. First, it must be used in commerce, and second, it must be distinct from other registered trademarks.
In order to get a trademark registered, the trademark must be used in commerce, first. That means that the applicant must be trying to sell their goods or services using their trademark, and they’ll have to prove it to the United States Patent and Trademark Office (“USPTO”) prior to registration.
The good news is, however, that even if you’re not ready to begin selling your product or service, you can still apply for your trademark to lock it down before you begin selling your goods and services, and see if there are any conflicts with existing registered trademarks. Sometimes applying for a trademark before you launch your product or service is a smart business move, so you do not have to go through the painful (and expensive) process of rebranding later.
The second component, distinctiveness, is the larger of the two hurdles. This is because your trademark has to be different from all other trademarks in your prospective class. When determining the distinctiveness of a trademark, the USPTO will look to see which of the following four categories applies to your trademark when assessing your goods or services:
- Arbitrary or Fanciful
These four categories can be seen as a rating system of sorts with Arbitrary or Fanciful trademarks being the strongest trademarks, and Generic trademarks being the weakest.
Arbitrary or Fanciful trademarks are defined as trademarks that, on their own, have nothing to do with their respective products or services. For example, the word “apple” brings to mind the fruit and has nothing to do with technology or computers. When used by the Apple Corporation as a trademark for its phones and computers, it is an arbitrary trademark, because “apples” have nothing to do with computers. Differently, the word “Starbucks” is not a real English word, and is therefore, fanciful (made up). So when the Starbucks company began using their trademark as a brand name for their coffee products, they availed themselves of the strong protections of a Fanciful trademark.
A Suggestive trademark is one that implies the nature or characteristic of the product or service without directly describing the product or service to you. For example, Greyhound does not automatically tell you that you will be riding a bus, but the name suggests that you will arrive at your destination quickly. Or Glance-A-Day does not automatically make you think of calendars, but you look at a calendar every day, so it kind of makes sense. Suggestive trademarks are not quite as strong as Arbitrary or Fanciful trademarks, but they are still registerable.
A Descriptive trademark, on the other hand, directly describes the nature or quality of the goods or services. Stated another way, the product or services is described by the trademark. For example, the trademark Wisconsin’s Creamiest Yogurt is descriptive, because it describes both where the product is from (Wisconsin) and a quality of the yogurt (creamiest). Purely descriptive trademarks are not generally protectable as words and by themselves.
In order for a Descriptive trademark to be protected and approved for registration on the Principle Register, it must have some type of secondary meaning that will cause people to associate it with a particular company or product. For example, say someone with the nickname “Salty” starts a pretzel company and names it Salty’s Snax. It describes the pretzels but also is the founder’s nickname, thereby, also giving it a secondary meaning. Or sometimes, when the Descriptive trademark has been used continuously for over five years, it can acquire secondary meaning in the relevant market and also be protectable.
Contrasting Descriptive trademarks to Generic trademarks, a generic trademark is composed of common words, often nouns, and they are not normally eligible for protection as trademarks. This is because they are too generic, and the USPTO does not allow one company to own a generic word to the exclusion of every other company in the same business. For example, a company named “Salt Company” that sells salt is not going to be approved to register, as it is not capable of distinction from any other salt manufacturer. And if the USPTO allowed them to own the word “salt,” no one else would be able to use that word for their products in the same class.
If you are looking to register a trademark, reach out to one of our competent intellectual property attorneys. The trademark process can be long and complicated, but we will work with you to create the strongest trademark possible, help guide you through the registration process, and aid you in protection against infringement of your trademark by others.
ABOUT THE AUTHOR
Chris is the managing attorney for the Business Law Division of the firm. He loves working with his team, and loves what he does for the firm. When he’s not working, you can find him hiking or cooking. He enjoys the great outdoors, and the great indoors when he’s making new dishes to try.