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Intellectual Property 
Trademark |
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Definition
| Purpose |
Strength of Mark|
Establishing a Mark
| Infringement
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| Definition |
A “trademark” is a word,
name, symbol, device, or any combination adopted and used, or
intended to be adopted and used, by a manufacturer or merchant
to identify their goods and distinguish them from those manufactured
and sold by others. A “service mark” is similar
to a trademark except that it is used or intended to be used
in connection with services rather than goods. Distinguished
from trademarks and service marks are “trade names”
or “commercial names,” which are the names used
by manufacturers and others to identify their business, vocation,
or occupation.
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Purpose
of a Mark |
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The basic purpose of
a trademark or service mark is to
- identify and distinguish the goods or services of one
person from the goods or services of another,
- signify that all goods or services bearing the mark come
from a common source,
- signify that all goods or services bearing the mark are
of similar quality, and/or
- symbolize the goodwill of a business.
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| Strength
of a Mark |
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| Trademarks and service marks
are of varying strength. The degree of strength of the mark
determines, to some degree, the amount of protection afforded
the mark. Courts have adopted the following four categories
based on the relative strength of the mark.
Fanciful and Arbitrary
Marks
Fanciful marks are coined words or phrases invented solely
for functioning as a mark (e.g., EXXON, XEROX, and KODAK).
Arbitrary marks have a common use or meaning, but when used
in conjunction with a particular good or service neither
suggest nor describe any aspect of that good or service
(e.g., IVORY soap, STORK CLUB nightclub, and NOVA television
series). Fanciful marks and Arbitrary marks are very strong
marks, and are entitled to protection upon adoption.
Suggestive Marks
Suggestive marks are generally defined as those which merely
suggest some quality or ingredient of the goods or service.
Suggestive marks are strong marks, but not as strong as
fanciful or arbitrary marks. As a general rule, suggestive
marks are entitled to protection upon adoption.
Descriptive Marks
Descriptive marks are generally defined as those which
describe the intended purpose, function, use, or effect
of the goods or services or the class of intended consumers.
Descriptive marks are entitled to protection only upon a
showing of acquired distinctiveness or secondary meaning.
Most marks are either suggestive or descriptive, and determining
where a particular mark falls is one of the most difficult
issues in trademark law.
Generic Marks
Generic marks are generally defined as a common descriptive
name of a good or service. Generic marks are never entitled
to protection. Examples include PLANTS as the name of a
plant store or LIGHT for light beer. It is also possible
for marks that were originally protected by virtue of being
Fanciful, Arbitrary, Suggestive, or Descriptive, to become
generic by becoming the common name of the good or service.
Examples include THERMOS, ASPIRIN, ESCALATOR, and YO-YO.
To prevent this from occurring, the owner of the trademark
must enforce the mark by warning and/or pursuing infringes.
Trademarks are NOT self-enforcing, as is the case with all
intellectual property.
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| Establishing
a Mark |
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Several ways exist for establishing
a trademark. Trademark rights stem from actual use of the mark
in commerce, thus, common law trademark rights exist. Federal
registration of trademarks is not absolutely necessary, but
it brings with it several advantages. These include a presumption
of use through out the United States, as well as, jurisdiction
in federal court. State registration of a mark is also available.
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Federal
Registration
A federal trademark application may be filed for a mark
based upon (i) actual use of the mark in interstate or international
commerce, (ii) a bona fide intention to use the mark in
interstate or international commerce, (iii) a foreign application
filed in a treaty member country which is less than six
months old, or (iv) a foreign registration issued in a treaty
member country. Federal registration of a mark confers many
advantages to the owner, including federal jurisdiction,
a presumption of the registrant’s ownership and exclusive
right to use the mark, and constructive notice of use of
the mark to all persons adopting a mark. Federal registration
includes other benefits as well.
Upon successful federal registration, owners are entitled
to use the ® symbol after the mark to give notice of
federal registration.
Federally registered trademark registrations are valid
for renewable periods of ten years, and therefore potentially
of indefinite duration. A mark is protected, however, only
as long as it is used. Non-use of a trademark results in
abandonment.
State Registration
Many states also provide for trademark registration. Protection
afforded by this route is limited when compared with federal
registration.
Common Law Trademark Rights
It is not absolutely necessary to formally register a trademark
in order to protect it. Common law trademark rights flow
from familiarity based on actual use. Many trademarks originate
by simply using the mark in commerce and affixing the ™
symbol after the mark. Use of this symbol does not confer
the benefits of federal registration, but does serve notice
to the world that the user regards a particular mark as
its trademark.
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| Infringement |
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| The basis for a finding of federal
statutory trademark infringement is “likelihood of confusion.”
Similarly, the statutes of many states provide that likelihood
of confusion is the standard to be applied to determine infringement
of state-registered marks.
Likelihood of confusion means that confusion is both possible
and probable. It is not sufficient if confusion is merely
possible. Likelihood of confusion is typically proven by
- survey evidence indicating consumer confusion,
- evidence of actual confusion, or
- a logical inference based upon a similarity of the marks
and the goods or services upon which the marks are used.
The factors generally considered in assessing a likelihood of
confusion include
- similarity or dissimilarity of the marks,
- nature of the goods/services,
- trade channels,
- purchasing decision (sophisticated or impulse purchase),
- fame of the prior mark,
- if there are other similar marks,
- actual confusion,
- length of concurrent use,
- variety of goods/services,
- market interface,
- strength of mark,
- extent of potential confusion, and
- other factors.
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| Definition
| Purpose |
Strength of Mark
| Establishing
a Mark | Infringement |
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