What is a Trademark?

What is a Trademark?

---

Trademark relates to protecting a word, name, symbol, device, or combination thereof used in commerce in connection with a product.^[1]15 U.S.C. § 1127  Additionally, non-conventional trademarks may include color, smell, or sound.^[2]As an example of, think of the pink color of Owens-Corning fiberglass insulation.   Service marks are almost identical to a trademark except that the protection is applied to a service rather than a product.^[3]Id.  Trademark is governed by both Federal and State law, although most of the protection stems from the Lanham Act (originally enacted in 1946 and recently amended in 1996).^[4]See 15 U.S.C. § 1051 et seq.  

In order to qualify for a trademark, the mark must be distinctive, meaning that the mark is different enough from other goods and/or marks in a market to not be easily confused.  Trademarks are generally classified into one of four categories: arbitrary/fanciful, suggestive, descriptive, and generic.^[5]See Zatarain’s, Inc. v. Oak Grove Smoke House, Inc., 698 F.2d 786 (5th Cir. 1983)   Interestingly, the laws and requirements for a trademark depend upon which category the trademark falls within.  Generally, if a mark is classified as arbitrary/fanciful or suggestive, then it is considered to be inherently distinctive and rights are determined by priority of use.  If a mark is classified as descriptive, then rights may be determined if it has acquired a secondary meaning. If a mark is classified as generic, no rights are conferred.

Secondary meaning is when the public understands the mark to mean something beyond the words and/or images of the mark.  A good test in analyzing secondary meaning is whether the source of the mark rather than the product itself has acquired a meaning.

A product or service name may become generic over time.  Companies many times face a hard struggle to promote their product or name.  However, if the name becomes too popular, then they face the struggle of the mark becoming “genericized.”^[6]This is also sometimes called “genericity.”   For example, the terms aspirin, linoleum, thermos, videotape, and zipper all had valid trademarks at one time, but because the term came to represent or describe a general category (rather than a specific product), the mark became generic.

Rights to a trademark may be acquired either by being the first to use the mark in commerce or by being the first to register the mark with the USPTO.^[7]See 15 U.S.C. § 1127   Of course, as indicated above, if secondary meaning is required, then it must also be established before being eligible for a trademark. Additionally, a person who has a “bona fide intention” to use a trademark may also apply for a trademark.^[8]See 15 U.S.C. § 1051

The requirements for filing a trademark include paying a fee, providing information (e.g. address, etc.) of the applicant, and a statement regarding the mark.^[9]15 U.S.C. § 1127   The statement may include such things as indicating that the applicant is the owner of the mark, that the mark is in use in commerce, that no other person (to the applicant’s knowledge) has a right to the mark.^[10]Id.  

A trademark technically can last indefinitely as long as it is properly renewed.  However, a trademark may be lost through abandonment (no longer use of the mark), improper licensing/assignment^[11]This is sometimes referred to as “naked licensing.”  (the mark is licensed/assigned to others without controlling the nature or quality of the goods), or genericide. 

Some common examples of powerful trademarks include the Nike Swoosh,^[12]This mark is a derivation of the original Nike Swoosh  the Google name,^[13]© 2012 Google Inc. All rights reserved. Google and the Google Logo are registered trademarks of Google Inc.  The Google Trademark was originally in color. It has been reproduced in black and … Continue reading  and Rolex.^[14]One of the trademarks that belong to Rolex may be found at registration number 74292520.  The Rolex Trademark was originally in color. It has been reproduced in black and white.