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, the term used to collectively refer to what is technically either a trademark or service mark, 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 or brand identifier.
A trademark can be any word, name, symbol, or device or any combination thereof used by any person or business to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods. In order to be registered, a mark must be capable of distinguishing the goods of the trademark applicant from those of others.
Trademarks are often classified in categories of generally increasing distinctiveness, namely a trademark can be considered to be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. The latter three categories of trademarks are deemed inherently distinctive and are entitled to trademark protection because their intrinsic nature serves to identify a particular source of a product. In contrast, generic marks are those that refer to the genus of the particular product and cannot be registered as trademarks.
Similarly, trademarks that are merely descriptive of a product are not inherently distinctive and hence cannot be protected. However, descriptive marks may acquire the distinctiveness necessary to allow them to be protected. The Trademark Laws in the United States explain that a descriptive mark that otherwise could not be registered may be registered if it has become sufficiently distinctive. This acquired distinctiveness is generally called secondary meaning. So it is said in the industry that when a descriptive trademark has acquired secondary meaning it may then be protected.
The selection of a particular mark that will function as a trademark or a service mark is very important. From a legal standpoint, a trademark that has no relation to the product or services offered will be the strongest type of mark. For example, trademarks such as “Google” for a search engine, “eBay” for online auctions and “Bose” for audio equipment make excellent and strong trademarks. Descriptive marks provide less trademark protection because if a term is descriptive it can be used by anyone else selling the same goods or providing the same services. For example, you could not register as a trademark “Gas Station” to be used as a trademark associated with an automobile service station.
Notice how in each example above the term is stated for use in a particular business area. This is how trademarks operate. You not only select a trademark, but you identify which class of goods or services the trademark will be used in. Trademarks are never registered in all classes of goods or services, although giant corporations will typically register trademarks in a wide variety of classifications. Nevertheless, the point here is that while a trademark may be descriptive with respect to one industry, it may well not be descriptive with respect to another industry. For example, if you wanted to register “Gas Station” as a trademark for a restaurant that would sell hot dogs and baked beans, you probably could do so because in that context the term “Gas Station” is not descriptive, but would likely be considered suggestive.
Many sales and marketing people will gravitate toward descriptive marks for products and services hoping that potential customers will immediately identify the product or service being offered. This approach leads to a weak or even sometimes unprotectable trademarks. So it is always a good idea to carefully consider whether it is in your long term best interest to pick a name or attempt to register a trademark where weak or no federal trademark rights are likely to exist.
The best types of trademarks to pick from a legal standpoint are those that are either fanciful or arbitrary. These types of trademarks will be extremely strong and the law will protect them against any similar encroachment. Fanciful trademarks consist of “coined” words or terms that have been invented and do not have a dictionary meaning, such as Google, Kodak, or Exxon. Arbitrary marks are those marks that consist of commonplace words, terms or symbols that are used in such a manner that they do not describe or suggest the product or service with which they are associated and include such marks as “Black & White” for scotch whiskey and “Apple” for computers. Suggestive trademarks, which are strong but not as strong as arbitrary or fanciful trademarks, are familiar words or phrases that are frequently used by publishing and media companies in an inventive way to “suggest” what their product or service really consists of, such as “At A Glance” for calendars.
Descriptive marks 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 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 a 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.
TO BE CONTINUED… Up next is discussion of obtaining state versus federal trademarks. For a preview — federal trademark rights are much stronger and greatly preferable, but state trademarks can be quite useful in the right situation.