Selecting A Protectable Word Trademark
Although trademarks and service marks can be word marks, design marks (logos), initials and numbers, slogans, trade dress/product configuration, sounds, colors and scents, the most common trademarks are the word marks and this paper will focus on choosing a word mark for your business that will be protectable. When choosing a trademark for a product or a service mark for a service, you want to take steps to have a mark that is protectable from someone else being able to use it and you also want to be sure that your mark won’t infringe on another person with superior rights to yours. To achieve that, you should understand some basic ideas about trademark law.
An entity name, such as a corporate, partnership or limited liability company (LLC) name is not always a trademark and the act of forming an entity with a business name with the secretary of state does not provide a business with a trademark. If an entity or business name is to function also as a trademark, it must be used as a trademark, that is, in an manner that modifies and identifies goods or services. For example using Acme LLC as the name of the company on packaging is not a trademark use, but referring to Acme LLC light bulbs on packaging or labeling is. Also, merely forming the entity and listing the name with the state is not sufficient to guarantee the business’s exclusive rights to the trademark. To ensure exclusive rights, the entity name that is used as a trademark should be protected via either a state or federal trademark registration. That is also true of filing a name as an assumed name or a “DBA” with state or local agencies. No trademark rights are secured by such a filing, although they may be legally required for other purposes.
Type of Word Marks
A word mark consists of a word or group of words. The type of word or words chosen is important because it determines the scope of the mark’s protection. There are a number of different types of word marks and each is accorded a different degree of protection or exclusivity by the courts and the United States Patent and Trademark Office (“PTO”). The categories listed below go from strongest or most protectable to weakest or unprotectable. Because the test for protection is whether there is a likelihood of confusion with another mark, it is important to use words or a combination of words that are not similar in impression to an existing mark. For there to be a likelihood of confusion, there does not have to be an exact match on the words or spelling, nor do the goods or services have to be identical.
Fanciful Trademark – Strong. A fanciful trademark is a made up word that only functions as a trademark or service mark. Google® and Exxon® are words that did not exist before they were used as trademarks for search engines and service stations.
Arbitrary Trademark – Strong. An arbitrary trademark is a word that exists, but has no relationship to the good or service. “Apple,” when used for computers is a strong trademark because it wouldn’t normally be associated with computers.
Suggestive Trademark – Strong. A suggestive trademark is a word that, when applied to the products or services, requires imagination, thought, or perception to allow a person to associate the mark with those goods or services. Mustang® for automobiles is a suggestive trademark because a customer has to use imagination to conclude that the car travels like a wild horse.
Descriptive Trademark – Not Strong. A descriptive trademark immediately conveys information regarding an ingredient, quality, characteristic, function, feature, purpose or use of the product or service. As a result, the courts and the PTO usually accord such a mark only very narrow protection, and it is not immediately registrable upon the PTO Principal Register. To be registrable, the owner of a descriptive word mark must show “secondary meaning.” Secondary meaning is proven by providing the PTO with evidence that consumers view the descriptive term as an indication of the source of the goods or services and not a mere description of those goods or services. A descriptive word mark may be presumed to have secondary meaning if it has been used continuously over a five-year period. During that time, the mark can be registered on a Supplemental Register with the PTO, which affords some but not all rights associated with registration on the Principal Register. In addition, marks that are primarily surnames are generally categorized as descriptive word marks. While it is tempting to select a descriptive mark because of the ease in recognition of the goods or services provided, it is not recommended.
Generic – Weak and Unprotectable. Generic terms are words that define the products or services and cannot function as a trademark because it would prevent others from rightfully using the common name for the product or service that they make. Super Glue, after a costly court battle, was deemed generic when used on a strong, rapid setting glue and not entitled to trademark protection. Other terms, such as Aspirin, were once registered trademarks, but by usage that was not challenged by the trademark owner, became generic.
In addition to the types of word marks, before choosing a mark, you should determine its availability. In the United States, using a mark gives rise to rights to a trademark. These are “common law” rights and they entitle the business that began using a mark first to prevent others from adopting similar marks in that business’ geographic area or in its area of natural expansion of the business. A trademark owner may also obtain a federal registration for its mark which gives him exclusive rights to the mark throughout the United States for any goods or services that are the same or similar to those it offers. In order to obtain a federal registration, the mark must be “used in commerce,” which for trademark purposes, means interstate commerce, or sales outside the state in which the trademark owner is located. Sometimes sales to persons from out of state may qualify even if they take place in the trademark owner’s home state. If a business is only doing business in a single state, it may file for a state registration in that state and obtain exclusive rights to use the mark in that state.
Because of the multiple ways a trademark may be protected, before adopting a trademark, the owner should have a full search performed for availability that determines whether there are conflicting marks being used that either have common law rights or are registered in a state or on a register at the PTO. This search should be performed by a professional who understands the intricacies of a trademark search, such as how to search for phonetic equivalents and what goods and services may be considered similar to the proposed goods or services. In addition, if there are plans to use the trademark internationally, an international search should also be performed.
Domain Name Availability.
Because of the importance today of having an Internet presence, you have to make sure that the domain name with the .com extension or another acceptable extension, is available for your trademark. A search for domain names should be performed with the trademark search, so that you have all of your options before deciding on a trademark.
Time To Select Your Marks
When you are ready to select a trademark or service mark, I will be happy to help you through the process. I can help you screen potential marks for strength and perform the necessary searches to determine availability. I can then file all necessary applications and respond to any issues that come up in connection with registering your marks.