We’ve recently noticed an increase in demand for our trademark prosecution and protection services here at ARC Law Group. I suspect the economy has something to do with the uptick in trademark interest, as people are looking to protect their interests from those who might seek to profit of someone else’s goodwill. It also appears that more people are starting their own small businesses because they are either out of work and/or taking advantage of taxation and other incentives for starting new ventures.
If you’re thinking about starting a new business or expanding on something you’ve already created, you’ve probably already thought about the concept of trademark. It’s important for anyone considering registration of their mark with the USPTO to understand the fundamental concept of trademarks: A trademark is a word, design or logo that indentifies the origin of goods and services. Simply put, it’s an adjective used to describe where something comes from.
A common question from clients is, “Is the word, logo or design that I chose eligible for registration?”
That question can often be answered by looking at the distinctiveness of the particular mark. Trademark distinctiveness can be broken down into several categoriess:
A fanciful mark is prima facie registerable, and comprises an entirely invented word. Fanciful marks are inherently distinctive and offer the owner an almost certain chance of gaining registration. By example, "EXXON" had no meaning before it was adopted and used as a trademark in relation to oil related goods.
An arbitrary trademark is usually a common word which is used in a meaningless context. The most often cited example is "Apple" for computers. Arbitrary marks consist of words or images which have some dictionary meaning, but which are used in connection with products or services unrelated to that meaning. Arbitrary marks are also almost always immediately eligible for registration (absent someone else using the mark, which is another topic for another day).
A suggestive trademark tends to indicate the nature, quality, or a characteristic of the products or services in relation to which it is used, but does not describe this characteristic. Suggestive marks require imagination on the part of the consumer to identify the characteristic. An example of a suggestive mark is “Microsoft”, as software for computers. Usually, suggestive marks can be registered.
A descriptive mark is a word with a dictionary meaning used in connection with products or services directly related to the defined term. An example would be “Bright” used in connection with light bulbs. Other descriptive marks include those with geographic terms. Descriptive marks are usually not registrable absent a showing of distinctive character having been established. In the U.S. this is called gaining “Secondary Meaning”, and would allow for registration if the trademark owner demonstrates that consumers in the marketplace exclusively associate the mark with the trademark owner’s business. The easiest way to establish Secondary Meaning is through continued use of the mark for a number of years.
This is a fun area of trademark law, where a mark loses all protection as a trademark because the mark itself becomes a common name for some product or service. Remember earlier when I mentioned that a trademark is an adjective. Well, when a mark becomes generic it essentially becomes a noun or a verb. Many people don’t know that “Salt” and “Aspirin” were once trademarks. They served the same function as Microsoft until they became synonymous with sodium chloride and pain relief pills. Generic terms may generally be used by anyone (including other manufacturers) to refer to a product.
Some marks are on the verge of becoming generic, but the company that owns that mark is fighting like crazy to maintain its rights. A great example is Band-Aid. Most people associate the term Band-Aid with adhesive bandages, and the owner of the mark is dangerously close to seeing the Band-Aid name becoming generic (such that any company could market and sell Band-Aids). To combat this issue, the famous Band-Aid jingle was changed from “I am stuck on Band-Aid, because Band-Aid’s stuck on me” to “I am stuck on Band-Aid brand, because Band-Aid’s stuck on me”. A small attempt to maintain Brand status!
Another mark that is in danger of becoming generic is Photoshop, based on its use as a verb. Altering photos with your computer is widely becoming known as having your picture “photoshopped”. If Photoshopped becomes to o synonymous with the act of digitally manipulating pictures, then the mark Photoshop will become generic.
But I digress. The bottom line on this discussion is that you want to try and come up with the most distinctive mark possible if you’re looking to register your trademark. Try to come up with something fanciful or arbitrary, if you can. Otherwise it’s going to be much more difficult to gain rights to your trademark through registration with the USPTO. You also need to remember that your mark might become generic and you’ll want to do what you can to keep that from happening.
If you have any questions about trademark distinctiveness or have any other general trademark related questions, feel free to email ARC Law Group at firstname.lastname@example.org.
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