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Judith A. Keene, Esq. is Senior Counsel at HolzerIPLaw, PC. Practicing since 1987, she has assisted her clients with the creation, protection, and maintenance of their intellectual property issues.
April 11, 2016
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First
Steps: What is a trademark?
-- and How Can You Protect Your Brand?
You
have a name, a product, or an idea … while these may be intangible, they
represent your intellectual property - the unique character of your business.
They are yours and yours alone, and like business owners the world over, you
want to keep them that way.
A
well-designed and well-researched intellectual property program helps to
safeguard your names, trademarks, products, business information, and ideas
against infringement or copying by others. It can also save your business
valuable time and money in the event a name or idea is already taken.
Through this blog I hope to clarify many of the issues that new clients have when they come to my office in order to make it easier to create protectable brands ...and to maintain them.
***
Categories
of Trademarks
A
trademark (or service mark) is a word and/or design by which the purchasing
public identifies the source of a product (or service). A mark represents all the quality and
goodwill developed by the owner. A word
and/or design for which trademark protection is claimed falls into one of four
categories:
* Arbitrary or Fanciful
* Suggestive
* Descriptive
* Generic
A
general understanding of these categories is important in choosing a trademark
possessing protectable characteristics. An arbitrary or fanciful trademark
receives the greatest protection because it is least likely to be confused with
another origin. It means nothing in the context in which it is used
(e.g., "Apple®" computers or "Kodak®" film).
Suggestive marks are equally registrable and suggest a quality or ingredient of
the product or service (e.g., "Caterpillar®" tractors).
Such marks require imagination to associate the mark and its meaning.
Descriptive
marks are more generally understood to describe the products they represent
(e.g., "The Breathable Mattress" for mattresses). If a
trademark examiner at the U.S. Patent and Trademark Office (PTO) deemed a mark
descriptive, it may be denied registration or be granted limited
registrability on the Supplemental Trademark Register (as opposed to the
Principal Register). After 5 years of continuous use, such a mark may (or
may not) then achieve registration on the Principal Register by an application for
that purpose.
Confusing
Similarity
A trademark is protectable
if, when used with a particular good or service, consumers are not likely to
confuse it as coming from a different, source.
If such a “confusingly similar” pre-existing trademark, company name, or
trade name exists, and the chosen mark is likely to cross paths with any of
these pre-existing names or marks, the mark should not be utilized. The mark first utilized in interstate
commerce is the mark with senior rights.
Registration
A mark is protected upon
creation in the U.S.; however, registration of a mark provides benefits that
may not be otherwise available. Use in
only one state without any sales across state lines relegates registration to the
Secretary of State in which the mark is used.
Use across state lines opens up the possibility for registration with
the U.S. Patent and Trademark office. (PTO).
More information can be obtained at the
PTO website.
Registration in some other
countries is also possible through the U.S. PTO as the U.S. is a member certain
treaties that permit such applications. In certain circumstances, this type of
trademark application for registration is beneficial, however, a careful
analysis of a trademark owner’s needs must be made before determining whether
this application is sufficient, or if a direct application with the country of
interest is more appropriate.
Use of a
Mark
A mark should always be utilized
as an adjective with either a TM or SM placed next to the mark if the mark is
not registered with a national registrar (as opposed to a state registrar). The company name and address should also
appear somewhere on any written materials as well. Finally, efforts should be
continuously made to stop junior confusingly similar uses of marks. Failure to
properly utilize and protect a mark could result in loss of all protection for
that mark. Some examples of trademarks that have lost protection are “Monopoly,”
“Aspirin,” “Escalator,” and “Cellophane.”
Please note that this material should not be considered
legal advice and is for informational purposes only. If you have specific legal
questions, you should consult a qualified legal professional skilled in the
area of trademark law. If you would like more information about this topic,
please contact Judith A. Keene, Esq.
at (720) 684-5375 or by email at jkeene@holzeriplaw.com.
