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Trademark Power: Not All Trademarks Are Created Equal


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: August 25, 2010 @ 8:37 pm
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You have probably had circumstances when you have positively associated with a certain trademark.  Perhaps you were traveling and had the option to eat at one of several restaurants.  You might have preferred a sit-down meal, but you might have opted for McDonald’s or Burger King instead because you are familiar with what you will get, know it is going to be reasonably priced and within a certain window of acceptable.  This “positive association” made you pick the known over the unknown, which may have been far better, but could have been far worse and more expensive.

A trademark is a significant asset.  A trademark not only becomes your company seal, but it is how consumers will relate to your goods or services.  If you have high quality goods and services for a reasonable price then customers will associate your company with positive feelings and memories, so the next time they see your trademark they will conjure up in their minds a whole host of positives.  This conjuring up of positive feelings, emotions and memories of satisfaction can be powerful.

If you are like me, when you travel via car over the Interstate Highway System you might have some personal favorite places to stop.  I, for example, love Dunkin Donuts coffee.  So I am in the mood for a shot of caffeine I approach those blue service signs hoping to spot the Dunkin Donuts logo.  If I do then I get off the exit and in search of a large (or extra-large) coffee with cream and sugar.  What helps me find Dunkin Donuts, or any number of other establishments while on the road, is a familiar logo and practically all of those logos are trademarked.

A “trademark” (which relates to goods) and a “service mark” (which relates to services) can be any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce. The term “trademark” is, however, generally used to collectively refer to what are technically trademarks or service marks since the laws and rules that apply to service marks are identical to the laws and rules that apply to trademarks.

As already discussed by illustration above, trademarks identify and distinguish either the goods or services of one manufacturer or seller from goods or services manufactured or sold by others. In short, a trademark is a brand name. It will be what consumers use to identify your offerings, be it a good association or a bad association.

If you want to obtain a trademark you should be thinking about a federal trademark registration and not a state trademark registration. Most people are surprised to learn that a state trademark provides little, if any, real rights. If you obtain a state trademark in one state you are not even granted the right to use the trademark throughout the state. This is because a federal trademark that is after acquired can and will freeze your use of the trademark into the currently existing geography at the time the federal trademark is acquired. Therefore, you want to acquire a federal trademark, which will give you rights to the entirety of the United States, at least provided that no one else is previously using the trademark you register.

In order to obtain a federal trademark you must either start using the trademark in interstate commerce (i.e., some kind of commercial use that carries across state lines) and then subsequently file a trademark application. The definition of interstate commerce is pretty loose, and in likelihood most businesses will be engaged in interstate commerce even if you don’t think you are, but the requirement is real indeed.

For most individuals and businesses, when you file a United States trademark application you will want to file for protection via the Principal Register, which will provide rights superior to those provided by the Supplemental Register. The best way to explain the difference is that trademarks on the Supplemental Register are less protectable and, therefore, not entitled to as much protection against competitors as those on the Principle Register. If you seek registration on the Principal Register and cannot achieve it because the trademark examining attorney believes your mark is merely descriptive of the goods or serves you provide, you can agree to fall back to the Supplemental Register. In this situation getting on the Supplemental Register, if you can, still has benefits.

Only those trademarks that have been granted United States federal trademark rights can use the familiar R in a circle – ®. You can use this designation if your trademark is on the Principle Register or even if it is on the Supplemental Register, so for most you really won’t see much of a difference in terms of outward affect. However, if and when you need to enforce your trademark rights there will be a huge difference between trademarks on the Principal Register and those on the Supplemental Register.

Many marketing professionals will suggest that you select trademarks that are descriptive, believing that it is important for consumers to be able to immediately identify the product or service being offered. This approach, while perhaps sound marketing advice, would lead to extremely weak trademark rights and almost certainly finding your registration wind up on the less desirable Supplemental Register.

The best types of trademarks to pick from a legal standpoint are those that are either fanciful or arbitrary.  Arbitrary of fanciful trademarks will be extremely strong and the law will vigorously protect them against any encroachment by competitors seeking to use similar marks. Fanciful trademarks consist of “coined” words or terms that are created and do not have a dictionary meaning, such as Google, Kodak, or Exxon. Arbitrary trademarks are those that consist of common words, terms or symbols that are used in a way that does not describe or associate with the product or service, such marks as “Black & White” for scotch whiskey and “Apple” for computers.

The next best type of trademark to seek is one that is suggestive.  Suggestive trademarks, like arbitrary or fanciful trademarks, will be entitled to protection on the coveted Principle Register, but are somewhat weaker than either arbitrary or fanciful marks.   Suggestive trademarks are typically familiar words or phrases that are used in creative ways to “suggest” what their product or service really consists of, such as “At A Glance” for calendars.  With a suggestive trademark once you hear the trademark name and know what it is being used to sell you understand there to be at least some association.  Suggestive trademarks usually offer the right mix between adequate legal protection and adequate marketing opportunities that won’t require massive investment to get the public to be able to connect the trademark with what is being sold.

Descriptive trademarks describe the product, service or contents of the product and include such marks as “Bed & Breakfast Registry” for lodging reservations services.  Even if you could demonstrate that “Bed & Breakfast Registry” obtained sufficient secondary meaning  to be protected (which is difficult and expensive to do) you would likely be dissatisfied with the protection that you would ultimately obtain.  This is because you would not be able to prevent others from using the term “Bed & Breakfast” even with your issued federal trademark.  This is because trademarks do not provide a monopoly on language, and you cannot exclude others from appropriately and fairly describing what it is that they are selling or providing in terms of service.  Thus, from a legal standpoint you really should stay away from the descriptive category at all costs.

Having a federal registered trademark does not create a positive impression in the mind of the consuming public, but it will prevent others from using the trademark or one that is similar. The ability to prevent competitors from using the same or similar trademark (whether it is a logo, your name or slogan) allows you the ability to significantly distinguish yourself from competitors while at the same time preventing them from free-riding on the hard work you do to create positive impressions when consumers see and recognize your trademark.

If you would like assistance registering a United States trademark please send me a message.

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Posted in: Brand Building, Business, Gene Quinn, IP News, IPWatchdog.com Articles, Trademark, Trademark Basics

About the Author

is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.

 

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  1. Gene,

    I think you are partly conflating brand with trademark at the start, but hey, you are the lawyer.

    Where you did mess up, was not linking to this article from the counterfeiting article, since trademarks are what counterfeiting is about.

    Wayne