A trademark is a sign, symbol, word, slogan, logo, domain name or other indicating device that is used to indicate the source or origin of products and services from those of other businesses. A product or service is distinguished from other products and services of the similar nature by this indication, and it gives the trademark holder exclusive rights to its use. It is important to understand that a trademark doesn’t prevent another person or business from creating or using a similar product; rather it prevents them from using a similar indicating device.
An example of a company that has several trademarks is McDonald’s. Not only is the name McDonald’s trademarked, but its golden arches logo and certain item names such as the Big Mac are trademarked as well.
Trademark rights can be established in two different ways. The first way is through actual use of the sign while conducting business. For example, if a businessman starts a new company under a made-up name and conducts business—whether he is just setting up the business or has begun interacting in commerce—he has exclusive trademark rights to his company name. He can then use the trademark indicator “TM” next to his company’s name to indicate to the public that the name is a trademark.
The second way to obtain a trademark is by registering it through the United States Patent and Trademark Office. To do this, an application must be filed, in it a description of the trademark, the date of its first use, for what products and services it will be used, an illustration of the mark, under what classification it should be filed, and an example of its use. The symbol ® is associated with a registered trademark.
There are a few advantages of establishing trademark rights with the federal government. First, it serves as notice to the public that the exclusive rights to it are established and gives the holder exclusive national rights to it. Furthermore, it allows a lawsuit involving the trademark to be brought to federal court. Lastly, it can allow for future registration in foreign countries and prevent the importation of foreign goods that violate the trademark’s rights.
The main element that helps determine whether or not a trademark is entitled to exclusive rights is its distinctiveness. Depending on how distinctive a trademark is, the trademark will either be considered strong, and have legal protection, or be considered weak, and lack legal protection. A strong trademark will be particularly creative, and will fall into one of the following four categories:
Fanciful Trademark: Words that had no previous meaning, such as Kodak or Verizon.
Arbitrary Trademark: Words that are common but used in an unexpected context, such as Apple or Amazon.
Suggestive Trademark: Words that suggest qualities or characteristics about a product, but only hint at it and invoke imagination by the consumer, such as Lean Cuisine or 7-11.
Unique Symbols or Logos: McDonald’s golden arches or the Nike’s Swoosh.
Weak trademarks will not be particularly creative, and will usually not be protected by law. Certain weak trademarks can gain protection once certain aspects such as sales, advertising, marketing, can be greatly demonstrated. Weak trademarks include:
Descriptive Trademark: Words whose meaning directly relates to the product or service, such as Frosted Mini-Wheats (received trademark protection) or Raisin Bran (unprotected).
Description Trademark based on name or location: Milwaukee Brewery (unprotected) or Milton’s Baking Company (received trademark protection).
Terms that can never become trademarked include generic terms of products that are used in a descriptive context. For example, the word “milk” cannot be trademarked for a dairy drink and the phrase “glass windows” cannot be trademarked for a window installation company.
Trademark infringement occurs when a legally protected trademark is used or copied by an authorized party, or when an unauthorized party uses a confusingly similar sign. Since a trademark infringement lawsuit can only be brought to court when the trademark at question is registered, the holder can seek legal proceedings under law that prohibits unfair business practices, misrepresentation, and passing off if they never registered. However, when the trademark is registered, it is much easier for a trademark holder to show their exclusive rights in court.
Before going to court, a trademark owner can send a “cease and desist” letter to the infringer, explaining to them that they are violating trademark law and must stop using the trademark. If the infringer does not stop, a lawsuit can be filed in federal court. The trademark owner must be able to show that the infringer’s use of the trademark will likely cause the consumer to be confused. Once shown, the infringer can be ordered to stop using the trademark. Furthermore, the infringer can be forced to pay the owner for losses incurred as a result of the infringement, and may also be responsible for punitive damages and fines.
Like copyrights, trademarks can be licensed. The licensor must regulate the licensee’s use of the trademark and must make sure the quality and nature of the goods or services using the trademark is controlled.
In the United States, trademarks cannot be sold by themselves. The trademark owner must sell an asset of its company or a subsidiary company along with the trademark in order for the transaction to be legal. This is enforced to protect consumers from fraud.
Protecting your business name or slogan is important to avoid confusion on the part of your potential customers or clients. A trademark attorney can ensure that your rights are protected and that other parties do not benefit from your name or brand without your consent. Trademark attorneys can also help you seek compensation form or an injunction against another party who is infringing on your trademark.