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What do trademarks protect? The definition of a “trademark” is:
“‘[a]ny word, name, symbol, or device or any combination thereof’ used by any person ‘to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods . . . .” – United States Supreme Court, Majority Opinion
Breaking that down, we get the following three elements of a trademark:
In essence, the purpose of a trademark is a written word or drawing (popularly called a “logo”), that is used by a person in order to distinguish the source of their goods or services from those of others. Notice, however, the keyword bolded and italicized above is “source.” Of course, a key function of a trademark is the source to which it points to. Distinguishing between goods or services helps not only correctly identify the product, but helps identify the source from which the trademark emanates.
Above, as the Two Pesos Court makes clear, trademarks can consist of words and names. In fact, these are better known as “brands” or “slogans.” Technically, the term “brand” is much broader and refers to a person’s or business’ image, and not necessarily the trademarks owned. In fact, words, names, and slogans are known as “word marks.” For example, a trademark application for a word mark protects the name, word, or slogan only without any reference to its design elements. For example, the following are all word marks:
|Literal Element (i.e., the actual letters)||Common Name for the Type of Word mark|
|Beef. It’s What’s for Dinner.||Slogan|
Trademark designs, expressed in the Two Pesos quote above as “symbols,” are stylized words, names, slogans, domains, etc. As such, a trademark design or logo is called a “design mark.” A trademark design can take any shape, color or form and may be used with literal elements such as words, letters, slogans, or without them. A trademark application for a design mark protects only the design elements of the application and not the word elements.
|Literal Element (i.e., the actual letters)||Design Element|
|Beef. It’s What’s for Dinner|
Notice how the Literal Element for the Nike® “Swoosh” or “Checkmark” is left blank? The reason is because no letters, words, or standard characters appear. In this instance, Nike has already registered its name, but as a word mark (the name “Nike”) and a design mark (the words Nike but in a specific font) separately.
Here, trademark “devices” refer generally to the different manifestations of a trademark. Above, we covered two of the most famous devices, so let’s cover all of them below:
A common misconception is that once you register a trademark with the Trademark Office that, in and of itself, grants you the exclusive right to reserve its use. This misconception is incorrect because a person must actually put the trademark into use.
When asking: “What do trademarks protect?” the second element established above tells us that it must be “used by any person.” A “person” means either a human or corporate entity.
“Use in commerce” is a legal term. It means that “the bona fide use of a mark in the ordinary course of trade, and not [use] made merely to reserve a mark.” Brookfield Comms. v. West Coast Entertainment, 174 F. 3d 1036, 1052 (9th Cir. 1999). When Congress amended The Lanham Act, the premier trademark statute, it did so with the intent to ensure that people and corporations were not merely reserving marks with no intent to use them.
Congress clearly spelled out what was necessary for “use in commerce”:
For purposes of this chapter, a mark shall be deemed to be in use in commerce—
(1) on goods when—
(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
(B) the goods are sold or transported in commerce, and
(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
Here is the CliffNotes® version; there are two types of items, goods and services, and use in commerce varies with each.
A trademark is used in commerce with goods when:
The second prong’s reference to “in commerce” really means “interstate commerce,” and that normally requires that you sell at least two goods with the trademark outside your state. However, if the economic activity is in-state and is such that it “taken in the aggregate, would cause a substantial effect on interstate commerce” then that is enough to find for “interstate commerce.” Christian Faith Fellowship Church, 841 F.3d 986, 993 (Fed. Cir. 2016); see TEMP 901.03. If you have a website or are selling on Amazon, Shopify, or Etsy for instance, you are already “in commerce” the moment your goods with the trademark are on the Internet.
On the other hand, a trademark is used in commerce with services when:
So, if you are offering services online and you have a website or digital storefront with your trademark, you are already using your trademark “in commerce.”
You actually can (and should) use your trademark before you register your mark with the USPTO. As soon as you begin using your trademark, you become the trademark’s owner.
You read that correctly.
Using a trademark before registration creates a “common law trademark” and you can put the ™ symbol next to your name or design or SM if you have a service mark. Now, this can cause issues with conflicting marks if a professional attorney has not already conducted a comprehensive trademark search. Additionally, a common law trademark is substantially weaker and limited in geographic scope. A common law trademark will hamper your ability to prevent or enforce infringement and limit the its geographically scope. Accordingly, it’s wise to begin registration as soon as possible after you begin use.
Now, imagine walking into the laundry detergent aisle at a store. Now, imagine if all the detergent containers looked exactly alike, and were all colored white with no labels. Would you know which container held Gain®, Tide®, or Clorox®? A trademark’s primary and most important function is its ability to identify and distinguish the source of goods or services under the trademark from those of others.
Of course, a trademark’s identity is linked to a certain set of goods and/or services. The goods or services sold under the trademark are classified into forty-five groups or “Classes.” In fact, this is known as the “Nice Classification.” Within the Classification, the first thirty-four classes are “goods,” while Classes thirty-five through forty-five are “services.” As a result, your trademark must fall under at least one class, but could potentially encompass any combination of classes depending upon what goods and/or services you are (or intend) to sell. For example, this quick listing by EUIPO is helpful, and you can even find your exact Class by searching the United States Patent and Trademark Office (USPTO) Trademark ID Manual.
Additionally, depending upon the sophistication of a product, a trademark must be identifiable by a layperson in the ordinary course of business. For instance, in the example above, a person walking through an aisle at a supermarket would not know which container held which substance, but they would also know that they were not looking at children’s toys, automobile parts, or clothing all of which belong in other goods Classes. Accordingly, if a person cannot identify the source of the goods, then the trademark loses a key function.
A trademark must be distinguishable from another’s mark for goods or services. In fact, distinguishing your mark from other marks is a multistep process, but choosing the right words and letters can greatly increase the odds that your goods or services will be remembered by consumers and granted a higher degree of trademark protection.
Here, there are five degrees of strength in trademark names. To illustrate, these are the types of trademarks from strongest to weakest:
The first three are the strongest. Here, “Merely Descriptive” is a very weak mark, and can still obtain trademark registration, but will likely end up on less powerful Supplemental Register. Generic terms cannot receive trademark protection.
|Type of Mark||Definition||Examples|
|Fanciful||A fanciful mark is a term, name, or logo that is different from anything else that exists.||“Kodak,” “EXXON,” and “Clorox.”|
|Arbitrary||An arbitrary mark includes a term or phrase with a well-known meaning, but the meaning in its case is different.||“Apple” for computer products. “Banana Republic” for clothing.|
Unlike an arbitrary mark, a suggestive mark hints at or suggests the nature of a product or service, or one of its attributes without actually describing the product or service.
|“Airbus,” “Netflix,” and “Jaguar.”|
|Merely Descriptive||In contrast, a mark is considered merely descriptive if it describes an “ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.” Requires proof of “acquired distinctiveness” that functions as a “secondary meaning,” such as marketing and sales. Otherwise, the mark will be eligible for registration on the Principal Register.||“NoPalea” for nutritional supplements. “Apple Pie” for potpourri. “Bed & Breakfast Registry” for lodging|
|Generic||A generic mark does not qualify for registration.||“Donut Shop” for a donut store.|
Often, clients will try to link their trademark to a product description or quality. Interestingly, the key is to avoid this impulse because it will result in a “merely descriptive” refusal. The less connected the mark to your name or logo, the stronger the trademark.
What do trademarks protect? As stated above, trademarks function to identify and distinguish the source of goods and products.
Copyright protect works of authorship such as books, film, music, masks, software, architecture, and more. Copyright does not extend to facts and ideas, but it does protect their “expression.” Copyright protection does not extend to names, titles, and short phrases.
Patents grants an inventor exclusive use to create and profit from novel, non-obvious, and unique technical objects or processes.
Related: Reviving an Abandoned Trademark
As mentioned above, you can obtain a trademark simply by using it. You would simply have a very weak and geographically confined trademark known as a “common law trademark.”
The process of obtaining a trademark registration, however, involves great skill and care. After selecting your name or design, you must use the USPTO website to file a trademark application. The application appears deceptively simple. I say that because it is riddled with legal terms of art such as “disclaimer,” “appropriate specimen,” “Section 1(a),” “Intent to Use,” “Notice of Allowance,” and “Statement of Use” etc. Clients often come to me after their trademark received a minor or major office action refusal, all of which could have been avoided had they approached me at the initial stage. If you have an idea for a name or logo, it can only help to let an experienced trademark attorney take care of the filing.
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