Technically, a “mark,” when used in connection with goods (such as shoes, clothing, or cars) is a “trademark.
In the last article entitled, As a Small Business Owner You’re Thinking: Why Bother with Filing a Trademark? we discussed why one would want to file a trademark. In this article, we consider what a trademark is, and is not.
Even though it can be registered at the U.S. Patent and Trademark Office (“USPTO”), a trademark is not a patent (which protects an idea, such as a process or mechanical invention) or a copyright (which protects the expression of an idea, like a movie or book or musical composition, or even the yellow pages phone directory).
Instead, a trademark is a word or design (what most people call a logo), or a combination of words and designs that communicate the identity of the distributor or manufacturer that is the source of the associated goods or services.
What is a trademark?
Technically, a “mark,” when used in connection with goods (such as shoes, clothing, or cars) is a “trademark“, and when used in connection with services (such as computer consulting, banking or … lawyering) is a “service mark”, but we’ll use them interchangeably here.
In the U.S., marks are protected based on who first USES them continuously in interstate commerce. “Use” has to involve more than a token volume of products or services – not a box of goods to a relative — but a real shipment to a significant customer (say, to WALMART) or to a significant number of customers who have had the opportunity to purchase the goods or services directly or via a website that offers the products for sale.
“Interstate commerce” means between, at least, two states – so, a local restaurant needs to be advertising and making sales to customers across state lines. “Continuous” means, essentially, without stopping, but there is some latitude for short periods when sales are temporarily discontinued.
Getting to the USPTO first
Getting to the USPTO first can be an important step to developing a strong mark, but it does not necessarily give to the person or company who files first, exclusive rights to use the mark.
Because trademark rights are based on use, an earlier user may have common law (that is, unregistered) rights that are superior to the later user who happened to file first – particularly if the senior user can show the unregistered mark has acquired “secondary meaning” (that is, a reputation among the relevant consumers).
But, as we discussed in our last article, registering a mark affords the holder a lot of advantages over the owner of an unregistered mark.
The strength of a mark is important for at least two reasons: a strong mark is more likely to promote successful branding of a product (although, of course, you still have to account for your product’s excellence!).
Also, a court is more likely to find that the holder of a strong mark has a superior claim to its use over the holder of a weaker mark that is confusingly similar to it.
When a mark is strongest
A mark is strongest (more likely to develop secondary meaning, and less likely to be confused with another mark and to have greater branding potential) when it is “fanciful” — that is, an invented word that has no meaning other than as used by the trademark owner or uses an existing word in a manner entirely unrelated to the product. Think: EXXON or VERIZON or APPLE (for computers; not for an orchard).
The next strongest type of mark is “suggestive”: it involves using words that hint at what the product is. For example, JET BLUE or NEW YORK TIMES. Sometimes, the USPTO will require the owner to “disclaim” the exclusive right to use part of a suggestive trademark – like the “JET” in JET BLUE.
Next page- The next strongest and The last type of proposed trademark is “generic”