Choosing a Trademark

by Eversheds Sutherland (US) LLP
Contact

Two-Fold Purpose of Trademarks

Customers know a business and its goods and services by its trademarks. Trademarks are source identifiers that indicate the origin of goods or services in the marketplace and distinguish them from the goods or services of others. Trademarks also represent the goodwill that a business has built up through its history of offering quality goods or services. To qualify as a trademark (for goods) or a service mark (for services), the chosen word(s) or symbol must be sufficiently distinctive to serve these two functions.

Corporate, Company or “Doing Business As” (dba) Names

A corporate, company or dba name is not necessarily a trademark. Mere incorporation, formation of a company or partnership, or registration of a business name does not provide a business with trademark rights in the name, nor does listing a name on a state’s corporate, dba or company name registry. To establish trademark rights in a name, a business must use the name as a trademark, that is, use the name in an adjectival manner followed by the generic term for the particular goods or services (e.g., Beaulieu® carpets or Protective Life® insurance services) to market and sell those goods or services in commerce. The name, like any trademark, must be sufficiently distinctive to identify and distinguish the business as the source of the associated goods or services and embody the goodwill earned by the business. To ensure exclusive trademark rights in a business name, a business should secure state or federal trademark registration.

Trademarks and Domain Names

A domain name is an address on the internet, much like a street address is a geographic locator of a bricks-and-mortar business. Businesses often register their names or trademarks as domains. However, merely registering a word or words as a domain does not, by itself, create trademark rights. A domain name may become a trademark if it is used as a trademark, that is, to identify and distinguish the source of goods or services.
 
Types of Trademarks

Trademarks and service marks (collectively referred to simply as “trademarks”) may be divided into five primary categories: word marks, design marks, initials or numbers, slogans, and trade dress or product configuration. Although beyond the scope of this article, sounds, colors, flavors, and scents may also function as trademarks and are protectable as trademarks under U.S. law.

Word Marks

A word mark is the most common form of trademark. It consists only of a word or a sequence of words, without design or stylization. As might be expected, some word marks make for stronger trademarks than others. In fact, words marks are typically analyzed, by the courts and by the United States Patent and Trademark Office (USPTO), as falling into one of five categories of marks: (1) fanciful or coined; (2) arbitrary; (3) suggestive; (4) descriptive; and (5) generic.

  • Fanciful – A fanciful word mark is essentially a coined or made-up word or group of words. It has no independent meaning other than to identify a particular good or service. (Tip: Be careful that a fanciful mark does not carry an unintended meaning or inference in a foreign language.) From a legal standpoint, a fanciful mark is the strongest type of word mark that a business can choose. A fanciful mark is typically registrable on the USPTO’s Principal Register (provided it is not confusingly similar to another party’s prior registered mark), and courts accord it very broad protection. Examples of coined words include SAMSUNG, VERIZON and HÄAGEN DAZS.
  • Arbitrary – An arbitrary word mark is a word or sequence of words with a definite dictionary meaning that is used to identify goods or services that have no natural connection to that meaning. APPLE, for computer products, and COACH, for leather goods, are examples of arbitrary marks. Like a fanciful mark, an arbitrary mark is considered by the courts and the USPTO to be quite strong and entitled to broad protection. It is also typically registrable with the USPTO.
  • Suggestive – As the name implies, a suggestive word mark is a word or sequence of words that is used in an original way to suggest a feature of the associated goods or services. If some measure of incongruity exists between a mark and the goods and/or services it identifies – that is, if the mark requires a mental pause or leap of imagination to grasp its import – then the mark is generally considered to be at least suggestive. Suggestive marks are not considered to be as strong as fanciful or arbitrary marks, but courts and the USPTO still accord the marks fairly substantial protection. Examples of suggestive word marks include FACEBOOK for a social media network, 7-ELEVEN for late-night convenience stores, and SNUGGLE for fabric softener.
  • Descriptive – A descriptive word mark immediately identifies a significant feature or characteristics of its associated goods or services. Until a descriptive mark acquires “secondary meaning” or recognition in the marketplace through use, it is considered to lack distinctiveness, and the courts and the USPTO therefore accord it very narrow protection. For example, HOLIDAY INN, before it acquired secondary meaning, referred simply to a lodging where travelers might stay when on vacation. This is its primary meaning. Its secondary meaning is as an identifier of the particular chain of hotels associated with the HOLIDAY INN mark. Until a descriptive mark acquires secondary meaning, it is not registrable on the USPTO Principal Register. However, a descriptive mark may be presumed to have acquired secondary meaning, and therefore distinctiveness, once it has been used continuously for five years. Additionally, during the initial five years, an owner of a descriptive mark may register the mark on the USPTO Supplemental Register to notify other businesses that the owner has claimed the descriptive mark as its trademark and to prevent registration of confusingly similar marks. KENTUCKY FRIED CHICKEN for restaurant services is another example of a descriptive mark that has acquired secondary meaning through substantial use in the marketplace. In addition, marks that are primarily surnames, such as MCDONALD’S, are generally categorized as descriptive marks. As one can see from the trademark use of the surname MCDONALD’S, even descriptive marks can be accorded very broad protection once they have acquired significant secondary meaning.
  • Generic – A generic term defines the goods or services with which it is associated. Such words can never function as trademarks and are accorded no protection by the courts or the USPTO. Were generic marks accorded protection, competing business owners would be deprived of the ability to describe their goods or services without risk of liability. Examples of generic terms include APPLE for apples or AUTOMOBILE for cars. Note that a protectable mark, even a fanciful mark, can run the risk of becoming generic over time; consider KLEENEX for tissue, XEROX for photocopiers or GOOGLE for internet search engines. Proper trademark use – e.g., KLEENEX-brand tissues – can help protect against the risk of so-called genericide.

Design Marks

A design mark consists of a pictorial or geometric representation that is used to identify goods or services. It can also be combined with words or phrases. Normally, design marks are considered to be inherently distinctive and are federally registrable (provided they are not considered confusingly similar to a previously registered mark). Examples of design marks include the picture of the bird used by Twitter to suggest its users’ tweets, the “swoosh” used by Nike to identify its shoes and apparel, or the Peacock design associated with National Broadcasting Corp. to suggest broadcasting in color. Design marks can be considered descriptive, though, or in some cases even generic, in the same way that word marks are categorized. Moreover, there are certain designs that, by statute, are not registrable, such as the official insignia of the United States or of other countries, states or municipalities.

Initials or Numbers

Initials and numbers may be registered as trademarks in the same way that word marks are registrable. Generally, initials and numbers lack any intrinsic meaning and are therefore less likely to be considered descriptive or generic for their associated goods or services. However, businesses should steer clear of initials and number marks that identify a government agency (such as the FBI) or a government grading system (such as the Department of Agriculture’s “Grade A” rating). Moreover, the initials and numbers must function as trademarks, and not merely as style or grade designations. Examples of protectable initial- or number-based marks include AT&T for communication services and LEVI’S 501 for denim.

Slogans

Sentences and phrases that are used as slogans or tag lines may also function as trademarks. But because sentences and phrases tend to convey more precise meanings than simple words, they are sometimes considered to be descriptive. As a result, slogans are often more difficult to register than simple word marks. Examples of registrable slogans include Nike’s JUST DO IT and McDonald’s’ I’M LOVIN’ IT.

Trade Dress/Product Configurations

Trade dress is the “look and feel” or “total image” of a good or service, and it can serve as a source identifier in the same way that more traditional word marks do. Examples include a particularly distinctive interior design for a retail store (Apple), or the color of a shoe sole (Charles Louboutin). The design of a product or a container shape may also be protectable as a trademark, provided the public perceives the shape or design as identifying and distinguishing the source of the goods. Examples include a distinctive bottle shape such as the Coca-Cola bottle, or a dripping-wax seal, such as used by Maker’s Mark. To be protectable, trade dress must be nonfunctional (i.e., it must not be essential to the use or purpose of the article or affect the cost or quality of the article) and distinctive. In the case of product design trade dress, distinctiveness must always be shown through proof of secondary meaning or acquisition of recognition in the marketplace.

Availability of Trademarks

In addition to the characteristics of the mark itself, a second important factor in choosing a trademark is its availability for use. In the United States, rights to a trademark may be acquired simply through use; state or federal registration is not a prerequisite. These common law rights entitle a business that first uses a mark to prevent others from adopting similar marks in the same geographic area or in areas of natural expansion. A business that obtains a federal registration for its mark has exclusive rights to the mark throughout the entire U.S. as of the date of registration for any goods or services that are the same or similar to those identified on the registration. If a mark has previously been registered, or is currently being used by another business, for goods or services that are similar to those offered by the potential applicant, the mark is probably not available for use or federal registration. Indeed, a business that uses a mark in the face of a previously existing similar use or federal registration may be liable for trademark infringement.

Even if none of the previously existing registrations or uses is associated with goods or services similar to those a business might offer, the business may still be advised to choose another mark, especially if the original proposed mark has been used widely throughout the U.S. As the number of similar marks increases, the scope of protection accorded any of those marks by the courts and the USPTO narrows. For especially common marks, it is likely that each business using the mark will be accorded only very narrow protection limited to the exact goods and/or services with which it has used the mark. Moreover, under the Federal Anti-Dilution Act, the senior user of a mark considered to be “famous” (think: TIFFANY’S or WESTERN UNION) may prevent a junior user from using its mark, even for goods or services unrelated to those for which the mark acquired its fame.

Finally, in choosing a mark, a business should also consider the availability or prior use of domain names comprising the mark or something similar. While domain name registration and use do not necessarily establish trademark rights in a given mark for the registrant, the unavailability of a domain name for use in marketing and offering a business’s intended goods and/or services may make investment in a particular mark a losing proposition.

Conclusion

The process of choosing an appropriate trademark is complicated and takes time. To avoid legal pitfalls, a business should work with trademark legal counsel to ensure that the mark or name the business selects is available and federally registrable. To determine the availability of a given trademark or service mark, a search of USPTO and state records and of certain common law databases should be conducted, in addition to general internet research. Since U.S. accession to the Madrid Protocol, it may make sense to search international registrations and applications filed in the European Community as well. Legal counsel can review search reports and provide an opinion on the availability and registrability of a proposed mark. Legal counsel can also advise regarding the timing of filing a trademark application to ensure that rights are protected from the earliest date possible.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Eversheds Sutherland (US) LLP | Attorney Advertising

Written by:

Eversheds Sutherland (US) LLP
Contact
more
less

Eversheds Sutherland (US) LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.