What is a Trademark?
Trademarks are used to gain recognition by the public, or a subsection of the public, of a particular good or service when a person comes into contact with the trademark. A trademark is a word, name, symbol, device, or combination of these that indicates the source of a good or service. A trademark cannot be merely a description of a good or service.
Sometimes the term “trademark” is used to refer to a mark indicating the source of goods while “service mark” is used to refer to a mark indicating the source of services.
What kind of things can be Trademarked and What Does a Trademark Prevent?
Goods and services may be trademarked.
A trademark prevents others from using that mark.
A person may not use a mark deceptively or confusingly similar to someone else’s trademark. A person may not trademark something that is merely descriptive of goods or services. Confusingly similar can be subjective and difficult to determine. The determination may include the comparing the look of the marks themselves, the market or area of trade for the marks, the customers for each mark, the number of other similar marks used in commerce, the number of times one mark has actually been confused as the other, the intent of one person to pass off his or her mark as the other mark, the degree of care customers of each mark may use, and the strength of the mark.
Trademarks must be distinctive. Trademark law analyzes four (4) categories of distinctiveness. Those categories are as follows:
- arbitrary or fanciful marks;
- suggestive marks;
- descriptive marks; and
- generic marks.
Arbitrary or Fanciful Marks
An example of an arbitrary or fanciful mark would be a word that is made up, or fictitious. It doesn’t describe a particular good or service. Another example could be a common word used in an unfamiliar way, such as “Apple” used as a trademark of a computer company. “Apple” doesn’t describe a computer, but it is a common word. When used in connection with computers, “Apple” is a common word used in an unfamiliar way. Arbitrary or fanciful marks are considered strong marks and are protected by trademark laws.
Suggestive marks are less strong that arbitrary or fanciful marks, but are inherently distinctive. A suggestive mark implies a characteristic or quality of the good or service to which it is attached. A suggestive mark doesn’t describe the features of the good or service, but it suggests them. In order for the consumer to realize the suggestion, the consumer must use some imagination or logical reasoning. An example of a suggestive mark is “Palm” used as a trademark of a company selling personal digital assistants (“PDAs”). “Palm” does not describe an electronic device. It may, however, suggest something that fits in a person’s palm. Suggestive marks are protected by trademark laws.
Descriptive marks describe some aspect of the characteristics of the good or service. The average consumer easily understands the connection between the mark and the good or service. An example of a descriptive word, is the word “apple” in the juice company trademark “CranApple.” For the average consumer, this clearly means a cranberry-apple combination. Other examples include the use of a geographic term or location in the name of a good or service from that area. A person cannot obtain a trademark on a descriptive word unless the word achieves secondary meaning in the mind of consumers. Secondary meaning is achieved when the public associates that word with a single source of a good or service even though the mark itself does not distinguish the good or service. If the mark is unregistered, the plaintiff must prove secondary meaning.
Generic marks do not identify the source of a good or service. Generic marks are common words consumers use to describe a good or service. “Juice” is a generic word when referring to a drink. “Apple” is a generic word when referring to a fruit. A person cannot obtain a trademark on a generic mark. A word can become generic and then it loses its trademark. The work “aspirin” used to be a trademark for “acetyl salicylic acid” but is now become a generic term and lost its trademark.