Over the next few weeks, I will be publishing on the firm web page a series of short articles on what the story is with trademarks. What’s the difference between a good one and a not-so-good one? How does a trademark become strong, and why would you care if your trademark was strong? How do you protect a trademark and so on?
So just what is a trademark? Very simply, a trademark is something – a word, a phrase, a symbol, a design, a sound, a picture – that identifies and distinguishes the source of the goods or services of one enterprise from those of others. A service mark is pretty much the same as a trademark, except it identifies and distinguishes the source of a service, rather than goods. Generally, both are referred to as “marks” and when discussing trademarks, the discussion usually refers to service marks as well.
In order to be considered a trademark under the Lanham Act, the U.S. statute that governs trademarks, a mark must be used in interstate commerce. The Lanham Act was amended in 1989 to define “interstate commerce” as all commerce that may be governed by the U.S. Congress. Numerous Supreme Court opinions have made it clear in the time since that Congress pretty much has authority over all commerce in the United States, even if it is foreign commerce or wholly intra-state commerce. That is to say, if you’re selling something in the US, you are engaged in interstate commerce, whether you know it or not, and are subject to the laws of the United States governing commerce in all its many forms.
That “used” part can be tricky. A trademark is used when it is placed in any manner on the goods themselves – think of a Crescent wrench, for example, or their containers – think of virtually everything that is sold in a store, or the displays associated therewith – think of a website that sells an enterprise’s own products, or on the tags or labels affixed thereto – think of a tag or label affixed to the last shirt or blouse you purchased, or if such placement is impractical on the documents – such as an invoice – associated with the goods or their sale; and it is “sold” or “transported as part of a bona fide use of the mark in the ordinary course of trade.
A service mark is used when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, which near as I can tell, is pretty much all commerce. So, a point of sale display for services is a use, as is a web page or online advertisement for services. Radio ads for both goods and services will often use a jingle, which can be a service mark and can be connected textually to a trademark – think of the Charlie the Tuna advertisements that were ubiquitous on television for many year, although you may have to be a bit older to remember them. Charlie was featured in a jingle, an animated ad, and on the can of tuna itself, often with a tag line referring back to the jingle and the animation.
The point is in order to be protectible as a trademark or service mark, such that you can keep others from using one that is confusingly similar – more about what that means in a future article – it has to be used as a trademark or service mark. Otherwise, it’s just a tradename, which generally does not receive anywhere near the scope and degree of protection afforded a trademark.
So, what is a good trademark? That’s a complicated question. The easy answer is one that is used a lot. Used in advertising, used on products, used on anything you can think of. The operative term is “used.” The strength of a trademark comes largely from its use in doing what a trademark is supposed to do, emphasize the source of a product or service. While a consumer may not even know the name of the company that makes or sells a product, if the trademark is doing its job, they should know that a product connected to a given trademark comes from a single source.
However, there’s more to it than just using that trademark. There is the trademark itself, and the care and planning behind designing and choosing it. The courts and the Patent & Trademark Office have a created a five-part spectrum of distinctiveness. A distinctive trademark is one that distinguishes the goods and services upon which it is used from the goods and service of others. The better the mark does that, the stronger the mark.
There are five categories of distinctiveness in trademark law. Fanciful trademarks are the most distinctive and are thus afforded the broadest legal protection. Fanciful trademarks are terms that are not found in the dictionary. They are terms that are coined specifically to act as a trademark. They are created or invented – think Starbucks. What is a Starbuck? That’s right; it’s not anything. Same with Exxon or Google or Clorox. And that’s their strength. The only time you see or use a fanciful mark like Starbucks is with regard to a specific coffee shop, not just any coffee shop, but one with that funny green sign and the name that doesn’t mean anything.
And that, I tell my clients, is exactly what you want. You want a mark that doesn’t tell you what the product or service is, and you want it to have no other meaning. None. So, every time anyone hears it or speaks it or reads it, they are referring to your product and only your product. Then, if someone else uses it or even one like it, you can stop them, fairly easily, especially if it’s on a similar or related product. The downside of fanciful marks – they’re harder to market. You’ve invented a word and now you have to get people to recognize and remember it. The corner coffee shop would have been easier to remember at first, but every coffee shop is on a corner, it seems. So how distinctive is that?
The second type of trademark on the spectrum of distinctiveness is an arbitrary trademark. Arbitrary trademarks are terms that have a common meaning that is separate and apart from the term’s connection to the goods and services they are associated with – think Apple. The meaning of the word Apple, as an example, has nothing to do with the good or service used with the trademark, computers, phones, music, etc. Arbitrary trademarks are inherently distinctive trademarks.
The strength of an arbitrary mark comes from the fact that a slight alteration of the term is likely to be found confusing to consumers and thus enjoined. Thus, while Snapple could function as an excellent mark for a certain type of fruit drink, it definitely will not work for computers. An arbitrary mark can, with the right marketing, be a very strong mark.
Next on the spectrum of distinctiveness are suggestive marks. Suggestive trademarks are trademarks that merely suggest the qualities or functions of a good or service – think CarMax. CarMax suggests something to do with cars, but you’re not sure what. Suggestive trademarks are not as strong as arbitrary or fanciful trademarks, but much stronger than descriptive trademarks. A descriptive trademark is said to lead the consumer by the hand, whereas a suggestive trademark would lead a consumer by the consumer’s mind.
A suggestive trademark suggests certain characteristics of the good or service, but which requires the consumer to use imagination and reflection to establish the association with the product or service. A test often used to distinguish between suggestive and descriptive marks is known as the “degree of imagination” test. If a trademark communicates information directly, then it will most likely be seen as descriptive, but if the trademark stands for an idea which requires some thought or imagination to associate the trademark to the goods or service, then it is most likely suggestive.
Descriptive trademarks are next on the spectrum of trademarks, although they do not really satisfy the main function of a trademark, identifying the source of a product. Descriptive marks are typically adjectives or adverbs that describe the functions, characteristics, size, uses, or other elements of a product or service. Does the mark convey knowledge about a quality, feature, function, or characteristic of the goods or services with which it is associated? If so, it’s probably descriptive. Examples of common descriptive trademarks are abbreviations, initials, acronyms, foreign language spellings, misspellings, and laudatory terms, like best or famous.
Descriptive marks are generally not given much in the way of protection. They are not distinctive and do not help establish the identity of the source of the product or service. In order to obtain protection, descriptive marks must acquire secondary meaning, i.e., the meaning of the term is as a source identifier for the product or service. Acquiring secondary meaning, i.e., acquiring distinctiveness involves use of the mark for a length of time and in such a way that the consuming public comes to recognize the mark as indicating the source of the product or service.
Finally, we come to generic marks. A generic mark is the actual name of the product. They cannot gain distinctiveness no matter what, because you may not monopolize the name of a product. Valid trademarks can lose their trademark status if consumers come to identify the trademark as the product. Aspirin and Velcro are two trademarks that are now generic. The only real way to prevent genericism of a trademark is heavy advertising and strict avoidance of the use of the marks as a verb or a noun – you want to use your mark as an adjective. Think Xerox. You don’t xerox a document. You photocopy it, although Xerox is nonetheless close to losing its status as a mark, because so many consumers still “xerox” documents.
In my next article, we’ll discuss federal registration of a mark; why you do it, how you do it, and what you get from doing it.