[originally published on October 12, 2015 at www.law-dlc.com]

Trademarks are everywhere.  Everything from a well-known slogan by a shoe company, to a famous organizational logo, to the signature color scheme or uniform of a performer can be considered as a trademark.  Trademarks can take many different shapes and forms, each of which may be protected by U.S. law.  The key is what can (or should be) protected and what may be enforced as the intellectual property rights of an individual or entity.  U.S. trademark law allows for a multitude of ways to express yourself or identify your product to the consuming public.  In fact, the law encourages this!

Forms of Trademarks

The United States Patent and Trademark Office defines “trademark” broadly:

A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.[1]

“Trademark” can actually mean various categories of trademark law, as the law distinguishes trademarks from service marks.  Trademark law also protects “trade dress” – which general describes characteristics or the visual appearance of a product or its packaging.  There are also “collective” marks, which are trademarks belonging not to one individual or entity, but to a group or association, such as the NCAA.  Members of the collective share equal rights in the trademark.

Based on the foregoing, the following is a non-exclusive grouping of the different forms some of these protectable marks can take.

1.         Word Marks

These are the most common forms of trademarks.  A trademark can be a single word or a string of words.  A protectable word mark can be any word or collection of words that is unique and operates to identify or distinguish your goods or services within a particular class or industry. For example, Microsoft owns registrations for at least 42 different word marks for “WINDOWS”® and its variants.[2]

2.         Symbols / Logos

Symbols or logos are the next most common trademark.  These are graphical designs that identify the source of goods without specific text or descriptions.  Famous logos can take the forms of anything from the Golden Arches of McDonalds,[3] to the Nike Swoosh, to what may be the most valuable trademark in the world – the iconic Apple logo for Apple Computers.

3.         Shapes

You can trademark the shape of a product or its packaging through trade dress.  For example, the shape of the Coca-Cola bottle is protected as a registered trademark.  If a product is sold via unique packaging or a distinguishing framing device, that also is protectable as a trademark.  Trademarks can be three-dimensional objects, so long as the shape is source-identifying.

4.         Color and Color Schemes

Trademarks can also be the overall color scheme and general atmosphere of a restaurant, which was the subject of the famous Two Pesos, Inc. v. Taco Cabana, Inc. United States Supreme Court case in the early 1990s.[4]  Trademarks can even take the form of a single color.  Yes, according to the Supreme Court, you can effectively own a color so long as it is not “functional” and the color sufficiently operates to identify the source of your product.[5]

5.         Sounds

A single sound can be a trademark so long as it serves to distinguish the product or service for the benefit of customers.  I bet it would not surprise you to know that George Lucas (through LucasFilm) has registered as a trademark the sound of the THX theme that plays before most every movie you see in the theater.[6]  And he will enforce his intellectual property rights everywhere he can.[7]

Now that we have an understanding of the different forms a trademark can take, how strong does a mark need to be before it can be protected?

Strength of Trademarks

As the USPTO stated in its definition, a trademark must identify the source of goods or services.  If the word mark is too common or the logo is too basic, the intended trademark may not satisfy the requirement that it distinguish the owner’s goods or services for the benefit of the consuming public.  Trademark law is designed to benefit consumers by allowing marks to distinguish competing goods or services in a similar industry or marketplace.  To own a protectable trademark, your mark has to meet a certain threshold of strength.  The following is an escalating spectrum of “strength” in trademarks.

1.         Generic Marks

Generic marks are marks that become synonymous with the entire class of goods or services and do not serve to identify or distinguish a particular source of goods or services.  Often, a trademark that was once considered strong can become “generic” if the consuming public identifies all products in an industry by that same mark.  This is known as trademark erosion or “genericide.”  It can be just as ominous as it sounds.  For example, “aspirin” was once a protectable trademark but it is now deemed generic for the entire class of pain relieving medication.  Companies with strong trademarks are required to protect their marks from potential genericide.  For example, “Xerox” was being overly used to describe all photocopying products and uses.  The Xerox Corporation successfully engaged in an advertising campaign to stop the unfettered use of its “Xerox” trademark to avoid losing its trademark rights.  In short, you cannot Xerox a Xerox on a Xerox®.

Generic marks are the weakest of marks and are not even considered trademarks.

Other trademarks (like “zipper”) that are or have become generic can be found here (click the link).

2.         Descriptive Marks – that lack Secondary Meaning

Next on the totem pole of trademark distinctiveness are “descriptive marks.”  Descriptive marks are just as it sounds – marks that merely describe the goods or services as they are.  These types of marks essentially transpose the dictionary definition of a word onto a good or service.  Per the USPTO, examples of descriptive marks include “MEDICAL GUIDE” for websites featuring medical guides, “DENIM” for jeans, and “SPICY SAUCE” for salsa.[8]

Descriptive marks are not considered to be inherently distinctive.  This means that without extrinsic proof that the mark itself operates to identify the source of goods or services, the mark itself cannot be registered as a protectable trademark.

3.         Descriptive Marks – having acquired Secondary Meaning

Being “descriptive” is not fatal to a trademark, however.  If a descriptive mark has been used by its owner for a long enough time or the mark has otherwise independently attained awareness in the marketplace, the mark has acquired what is known as “secondary meaning” and can be registered as a protected trademark in the United States.

After five years of continued use of a descriptive mark, the USPTO may consider this evidence of “acquired distinctiveness” or secondary meaning, and subsequently allow the registration, even though “descriptive” marks are considered to be weak marks.[9]

4.         Suggestive Marks

While descriptive marks can be registered with proof of secondary meaning, “suggestive” marks are considered to be inherently distinctive and do not need extrinsic proof of consumer recognition.  Suggestive marks are marks that serve to indicate (but not directly describe) the nature, quality or characteristics of the good or service that it is associated with.  Suggestive marks are viewed as invoking some aspect of a customer’s imagination.

The USPTO has identified “QUICK N’ NEAT” as being suggestive for a pie crust product and “GLANCE-A-DAY” for a calendar.[10]  Each of these types of marks would be readily available to be registered as trademarks upon their use in commerce, so long as no one else is already using this mark to describe similar products in a similar market.

5.         Arbitrary and Fanciful Marks

These are the strongest types of marks.  They are not only inherently distinctive but they are often either made-up words (the most famous example being “EXXON”) or they are common words but used for an entirely meaningless context (“APPLE” for computers).  These are immediately eligible for registration upon use in commerce.

Now that you have a fundamental understanding of the forms of trademarks and their varying levels of strength, the next step is deciding what to use as a trademark to distinguish your goods and services.  This is always an interesting debate within the trademark community.  A lawyer is always going to suggest an arbitrary or fanciful mark – because this is unlikely to cause confusion and the mark is inherently distinctive and protectable.  This also makes it easier to protect your intellectual property rights if your mark is ever challenged or threatened by a competitor.  Contrast this with most marketing departments – which will often want to skew closer to choosing descriptive marks because these are easier to associate with a product, and purportedly easier to sell to the consuming public.  For descriptive marks by definition require no imaginative step by the consuming public.  In theory, this makes it easier to associate a good or service with a product, or at least minimizes uncertainty.

I have always found that arbitrary or fanciful marks are better at getting the attention of consumers.  Even if an arbitrary word mark does not operate to initially identify a good or service, it often piques the curiosity of a consumer, which operates to spark an interest.  Once you have the consuming public’s attention, your trademark has served its purpose.

If you have any further questions on choosing trademarks, or just a general question about areas of trademark law, feel free to contact me at [email protected].  I am available to work with you on all areas of trademark acquisition, protection and enforcement.