What is Trademark?
A trademark is a recognizable sign, expression or design that is capable of distinguishing the goods or services of one enterprise from those of other enterprises. The owner of a trademark can be a business organization, an individual, or any legal entity. It is usually protected by intellectual property rights.
A trademark may be located on a voucher, a package, a label or on the product itself. Simply put, a trademark is a brand name. For the sake of corporate identity, trademarks are also being displayed on company buildings.
Even though federal registration of a trademark isn’t mandatory, there are a lot of advantages, including legal presumption of ownership nationwide, notice to the public of the registrant’s claim of ownership and exclusive right to use the mark on or in connection with goods and services listed in the registration.
Categories of Trademarks
In the business world, trademarks can take a variety of forms. There are many different types of distinctive marks that are classified as trademarks. Everything from a company’s name, a famous singer’s lyrics, fast food, computers, or even a sporting team’s mascot, etc. is swamped with examples of trademarks. To give you a better understanding of what trademark is, here are 5 classic categories.
1) Arbitrary/Fanciful Trademark
This kind of trademark is invented for the sole purpose of functioning as a trademark. It has no connection with the goods it is used in connection with. These types of trademarks truly build a brand from a very unique naming scheme and they are almost always guaranteed protection under trademark law if there are no pre-existing uses for such names in the given industry.
Fanciful marks are invented with the sole purpose of being used as a trademark. Meaning they are just arbitrary and therefore have nothing to do with their actual meaning. For example the trademark: ‘Apple’ for computers does not mean apples are associated with them. An arbitrary/fanciful trademark may be vigorous, short, meaningless or easily spelled.
Should You Choose an Arbitrary/Fanciful Mark?
It is worthwhile to choose a fanciful or arbitrary trademark especially for a new business that has ambition and a large marketing budget. Although choosing this kind of trademark may require more marketing effort in order for consumers to associate the mark with your specific products and services, it will offer your brand a broader scope of protection especially against third party infringers that market similar goods and services using a mark that is confusingly similar to your fanciful or arbitrary mark.
2) Suggestive Trademark
This is the best alternative to the arbitrary/fanciful mark. Suggestive trademarks ‘suggest’ rather than ‘describe’ qualities of the underlying goods or services. They are also referred to as allusive. This type of trademark requires imagination, thought and perception so that the consumer can reach a conclusion concerning the exact nature of the goods.
For instance, it takes an imaginative leap to realize that Greyhounds are fast and sleek. This is why these traits are implied in the use of Greyhound for a bus line. Other examples include JAGUAR for automobile, CHOW for cooking magazine, CRAZY GOOD for toaster pastries, Blu-ray for high definition video discs, etc.
Suggestive marks are often protected because the mark is unique enough to be used exclusively and not so general to preclude an ordinary use of such word.
Risk Associated with Suggestive Trademark
There is a major risk that comes with suggestive trademark; what one person (you as a business owner) may think is suggestive, another person (a trademark office examining attorney or court) may deem descriptive. And the rights associated with descriptive marks are usually substantially reduced than trademarks in the higher categories.
3) Descriptive Trademark
Descriptive trademarks are trademarks that identify the characteristics or features of the service or product to which the trademark pertains. For example: ‘deep bowl’ may be used as a mark for describing a spoon with deep bowl that can be used for scooping. Such terms cannot be registered unless it can be shown that distinctive character has been established in the term through extensive use in the market place.
Descriptive marks are generally not protected because the use of descriptive mark would preclude other reasonable uses to describe the service or product. For instance; the mark ‘Lektronic’ was famously denied protection by the USPTO on ground of being descriptive for electronic goods.
Descriptive trademarks are usually registered on Supplemental Register with the USPTO and in the event the mark acquires secondary meaning.
4) Generic Trademark
This is also known as proprietary eponym or genericised trademark. It is a trademark that has become the generic name for, or synonymous with a general class of service or product, against the usual intentions of the trademark’s holder.
Generic terms include common or class names for goods or services and these terms cannot be claimed as trademarks no matter how much evidence a mark owner can show regarding acquired distinctiveness. A generic trademark cannot be protected as a trademark because of its description of a category of product or service.
For instance, ‘water’ cannot be used as a trademark for water. This is because it is a generic name and therefore cannot be protected as a trademark. There is a tendency for previously strong trademarks to change to generic status because of the lack of protection strategy from the owner.
For example, ‘photoshopping an image” is a term that has been generalized and no trademark owner wants this type of thing to happen to their brand. Once a brand becomes a famous term, it is vital to maintain a constant vigil to protect against ‘genericide’. This is why a lot of brands have mounted heavy advertising campaigns to stop this from happening.
How to Protect Your Trademark
Protecting your trademark is like managing a winning sports team. You need both a good offense and a good defense. This also involves taking the time to identify a strong trademark that will be difficult for competitors to steal. Here are some steps to follow in order to protect it from infringement.
1) Pick a Strong Mark
When you launch a service or product, choose a trademark that has the strongest possible legal status. Avoid using generic terms like ‘salt’ as they cannot be protected by trademark. Instead, go for descriptive names like ‘Prosource speed jump rope’.
Generic names can be difficult to defend in court from a competitor who came up with a similar name. To ensure you are not infringing on another person’s trademark, consider spending some money on reputable trademark search firms.
2) Register a Name, Logo or Strap Line
By filling an application and registering with the regional/national trademark office and paying the required fees, you can obtain trademark protection at the national/regional level.
You are provided with 2 options at the international level. You can file a trademark application with the trademark office of each country in which you are seeking protection, or you can use WIPO’s Madrid System.
How Long Does Trademark Protection Last?
Trademark registration rights can last indefinitely if the owner continues to use the mark to identify goods and services. This is unlike patents and copyrights. Generally, it lasts as long as the trademark is used in commerce and defended against infringement.
However, you need to keep your registration alive and to do this, you must file at appropriate times.
* A declaration of continued use or excusable non-use under Section 8 Declaration of the Trademark Act
* An application for renewal under section 9 renewal of the Trademark Act. The owner may also be required to file a Declaration of Incontestability under Section 15 Declaration of the Trademark Act.
What Kinds of Trademark Can be Registered?
A word or a combination of letters, words, and numerals can make up a trademark. Trademarks may also include symbols, drawings, 3-dimensional features like, signs that are non-visible like fragrances or sounds, shape and packaging of goods, just to mention a few.
What Rights Does Trademark Protection Provide?
A trademark registration confers an exclusive right to the use of the registered trademark. What this implies is that the trademark can be exclusively used by its owner or licensed to another party for use in return for payment. Also, registration reinforces the position of the right holder and provides legal certainty, for instance, in case of litigation.
How does it differ from Copyrights and Trade Names?
These terms usually confuse business owners and customers because they sound similar and a company may decide to use its trade name in its trademark. For example, ‘Nike’ is famous for using its trade name in its trademark.
It is important for business owners or anyone looking to begin a business to know the difference between trade name, copyright and trademark. This is because the law draws a clear line between them, plus anyone could face a lawsuit if their trade name is sufficiently close to an already registered trademark.
Trademarks are identifiers of commercial products or services; copyrights protect an individual’s original works of expression; trade name identifies a business for non-marketing purposes.
Trade names have non-marketing uses that includes using them on bank accounts, contracts, letterhead or stock certificates. When trade names are used to specify goods and services, they can be referred to as trademarks.
Slogans or individual words are not generally protected by copyrights. But you can protect a creative design with copyright. This is why you could protect your logo design by both trademark law and copyright law.
A Copyright owner has rights for a term of 50, 75, or even 100 years. The amount of years depend on the entity that owns the copyright. But the ownership rights of a trademark owner is indefinite as long as he uses and protects it properly.