Trademarks

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. Trademarks, which is usually the term used to collectively refer to what are technically trademarks and service marks, serve two primary purposes. First, trademarks identify and distinguish either the goods or services of one manufacturer or seller from goods or services manufactured or sold by others. Second, trademarks indicate the source of the goods or services. In short, a trademark is a brand name.

The first step to acquiring federal trademark rights requires that you either (1) start using the slogan, name or logo in commerce (i.e., some kind of commercial use) and then subsequently file a trademark application; or (2) file an intent to use application which will lock in your filing date but which does not require immediate use. For more information see Applying for a Trademark.

The purpose behind US trademark law is to protect consumers. Certainly, giving a trademark owner a right to sue to protect consumers does provide protection for the trademark, but that does not change the central focus of the trademark laws. The way the trademark laws approach protecting consumers is by prohibiting even the likelihood of consumer confusion. The core element of determining whether trademark infringement exists is to inquire whether the “reasonably prudent consumer” is likely to be confused as to the origin of the good or service bearing one of the trademarks.

General speaking, trademarks perform four functions that are deserving of protection in the courts:

1. To identify one seller’s goods and distinguish them from goods sold by others;
2. To signify that all goods bearing the trademark come from or are controlled by a single, albeit anonymous, source;
3. To signify that all goods bearing the trademark are of an equal level of quality; and
4. As a prime instrument in advertising and selling the goods.

In addition to these four functions, it must also be kept in mind that a trademark is also the objective symbol of the good will that a business has built up. Without the identification function performed by trademarks, buyers would have no way of returning to buy products that they have used and liked. If this consumer satisfaction and preference is labeled “good will,” then a trademark finds its value in allow customers to develop affinity to a particular good or service and recognize this preference in the form of a positive feedback loop (i.e., increased and repeated purchases. That being the case, it is really the good will that is represented in the trademark that is valuable. In order to tap into this positive feeling a recognizable trademark must exist, but the key ingredient is having a product or service that customers like.

Trade dress is the totality of elements in which a product or service is packaged or presented. These elements combine to create the whole visual image presented to customers and are capable of acquiring exlcusive legal rights as a type of trademark or identifying symbol of origin. Because trade dress includes all factors making up the total image under which a product or service is presented to customers, it potentially covers almost all aspects of appearance. Things that have been held protectible under the category of trade dress include: (1) the shape and appearance of a product; (2) the shape and appearance of a container; (3) the cover of a book or magazine; (4) the layout and appearance of a business establishment such as a restaurant; (5) the theme and look of a line of greeting cards; and (6) the recognizable shape of an automobile.

When an applicant applies to register a product’s design, product packaging, color, or other trade dress for goods or services, the examining attorney must consider two issues: (1) functionality; and (2) distinctiveness. See TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001); Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775 (1992) (only nonfunctional distinctive trade dress is protected).

For more information about trademark law and related topics see:

• Trademark Infringement
• Applying for a Trademark
• Basic Facts About Trademarks
• FAQs About Trademarks
• Fees & Payment Methods
• Names, Titles & Phrases
• Role & Function of Trademarks
• Trademark Manual of Examining Procedures
• Trademarks: A Universal Phenomenon
• Trademark Searches
• United States Trademark Laws
• United States Patent & Trademark Office