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How to Protect Your Trademark

by May 23, 2018INTELLECTUAL PROPERTY, trademark

A Trademark is a symbol or shorthand way to indicate the source of origin for goods or services. Trademarks make it possible for manufacturers and service providers to mark their products and for consumers to recognize and distinguish their favorite brands. While Trademarks have been in use at least since ancient Egypt, the applicable legal principles have evolved considerably over time.

What is the purpose of a Trademark?

Trademark protection is heavily focused on preventing unfair competition in commerce. Trademarks were originally developed to prevent confusion in the marketplace, limiting the amount of investigation required for consumers to identify the source of goods. Our current Federal system, however, has evolved beyond this simple approach, and any courts deciding Trademark-related cases now delicately balance the interests of consumers, manufactures and service providers, and the general public.  This balance incentives owners to invest in the quality and goodwill of their brands, protecting against unscrupulous competition.

Can I register my mark as a Trademark?

Whether the Trademark is a word, symbol, logo, design, or slogan, it must be 1) distinctiveand 2) used in interstate commerceto gain Federal Trademarkprotection. Today, with the expansion of online sales and nationwide shipping, the “use in interstate commerce” requirement is rarely an issue. Once your mark is used on a product shipped across state lines, you have officially used the mark in interstate commerce.

On the other hand, proving the distinctiveness of a mark can pose difficulties. Trademark rights are limited, because we don’t want to restrict the use of basic designs/elements, by granting a monopoly on non-distinctive marks. If a mark is not distinctive enough, protection will only be granted if you can show secondary meaning.  This means that the public must recognize the mark as the source of origin for your goods/services.

Is my Trademark distinctive?

Trademarks generally fall along a spectrum of distinctiveness, from the least distinctive (generic marks), to the most distinctive (arbitrary/fanciful marks).

Generic Marks are NEVER protectable merely by registration and must acquire secondary meaning before gaining Trademark protection. Marks can be inherently distinctive (ie. Calling a bread company “Bread Co”) OR can become generic through use (ie. “Kleenex”, “Tylenol”). To determine whether a mark is generic, ask whether it answers “Who you are or what you are?”. If the mark describes WHAT you are, then it is generic. If the mark denotes WHO you are, then it is non-generic and protectable.

Merely Descriptive Marks are marks that describe a quality, characteristic, effect, or ingredient of a product (ie. “Cheesy Pizza”). Descriptive marks, like generic marks, require secondary meaning in order to gain Trademark protection.

Suggestive Marksare similar to descriptive marks, but only make a suggestion, and require imagination or thought to form the connection (ie. “Coppertone”, “PacSun”). Because suggestive marks require imagination, thought, or suggestion to conclude the nature of the goods, they are deemed inherently distinctive, and can be protected without showing secondary meaning.

Arbitrary and Fanciful Marks are marks that have no connection to the underlying goods or services. Fanciful marks use fake words to show source of origin (ie. “Kodak” for film). Arbitrary marks, on the other hand, use real words, but with no connection to the goods or services (ie. “Apple” for computers). Both arbitrary and fanciful marks are deemed inherently distinctive and can be protected without showing secondary meaning.

Certain classes of marks are deemed to never be inherently distinctive and will always need secondary meaning to show distinctiveness. For example, colors can be trademarked, but ALWAYS require secondary meaning. The same applies to basic shapes and designs, last names, and geographical marks, which ALL require secondary meaning before receiving protection. This ensures that we don’t allow monopolistic Trademark protection on basic elements that would prevent fair competition and use.

What other options do I have?

Secondary meaning to show distinctiveness can be difficult to prove. Extensive consumer surveys and expert testimony are generally required.  If a mark requires secondary meaning, but you can’t prove it, the other option is to join the “Supplemental Register” for Trademark protection. The Supplemental Register is a public list of marks that COULD qualify for protection but require secondary meaning.  Joining this list starts a 5 year clock of public notice. The supplemental register allows you to use the “®” symbol, and can give priority registration when filing foreign applications. As long as no one objects to your use of the mark within those 5 years, you can switch to the Principle Trademark Register, and secondary meaning is presumed.

If you are selling goods or services through interstate commerce, it is important to protect your brand as early as possible. Trademark registration allows you to enforce your rights and prevent infringement by your competition. Contact our office today at (833) 4-CAL-LAW to discuss options for registration and the best process for protecting your mark.