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Trademarks, Service Marks, Trade Dress
Any word, name, or symbol qualifies for trademark protection if it is used by a person (or that person has a bona fide intention to use the mark) in commerce to identify and distinguish his goods/services from those made by others and to indicate the source, even if the source is unknown. The purpose of the trademark law is to protect consumers from confusion as to the source of the goods and services by allowing producers exclusive rights in a mark reflecting goodwill and quality reputation they have developed.
The trademark owner is the first to use the mark in a given geographic area in connection with particular goods or services. State common law grants ownership by virtue of being the first person to use the trademark. Federal law does not create trademark ownership, nor does federal law preempt state law. The federal Lanham Act, however, provides a federal registration system for trademarks which are used in interstate commerce. In addition, the Lanham Act provides procedural rights and enforcement mechanisms. Any infringement of a trademark must be based on the likelihood of (and actual) consumer confusion.
The primary distinction between copyrights and trademarks is that no rights attach to the latter simply upon creation (trademark use is the key); a trademark need not be original or creative; no need to register, not even to bring suit; there is no automatic registration; trademarks do not fall into the public domain after a predefined period of time; and the exclusiveness of use is limited by geographic area and by the type of product and service.
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Classes of Marks
A mark is generic when it is a term commonly used as the name or description of a certain kind of good. In determining whether or not the term is generic, one of three factors must be fulfilled: First, the word/expression has such an inherent meaning in ordinary language or the public uses it to identify goods of other producers as well. Second, the term is a compound which, while not previously used, suggests the content of the description. For instance, the word “screenwipe” connotes the use and the constitution of the goods, if used for articles to be used for wiping screens. Third, the primary significance test ascertains the primary meaning of the term to the prospective purchaser of the product.
A generic mark cannot be protected and it cannot become a monopoly. This applies as well to phonetic equivalents and, in general, to foreign language translations of generic terms.
Where a mark specifically describes a characteristic or ingredient of an article, it is considered descriptive. Such a term may become a valid trademark upon achieving a secondary meaning: the mark has become distinctive of the producer’s goods and/or the primary significance in the mind of the consumer is not the product but the producer. Here, the mark no longer identifies the product but the producer and his goodwill.
Here the protection afforded is not absolute. Other producers may still use the word in its generic form and to denote generic products. This is a concept similar to the copyright fair use defense. However, the competing producer must not use the mark in its non-generic sense (e.g. Cat Chow® for cat food). A descriptive mark can be registered only after the mark has been used substantially exclusively for the goods for an extensive period of time.
A term which suggests an ingredient or characteristic of the product is suggestive. Upon being exposed to the mark, the observer or listener must use imagination and perception to determine the nature of the goods. Suggestive marks are protectible even without having acquired secondary meaning (e.g. Terminix® for pest control).
The best mark is an arbitrary mark. A word, for instance, which has not dictionary meaning ascribed to it is considered arbitrary. An onomatopoeic expression (a word which phonetically imitates a natural sound) may be considered arbitrary, even if it suggests the product. Highest level of protection available. The word either has no meaning in the language at all (it is “coined”, e.g. Kodak®, Exxon®) or it has no meaning in connection with the goods (e.g. Crest® Toothpaste).
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