Primary Trademarks
The term “trademark” is often used to refer to any type of mark that can be registered with the United States Patent and Trademark Office or USPTO. The two primary types of marks that can be registered with the USPTO are:
- Trademarks that are used by their owners to identify goods or physical commodities that are produced sold or otherwise transported or distributed via interstate commerce.
- Service marks that are used by their owners to identify services either for pay or otherwise.
A Generic Name
Names such as Pepsi ® and Coke ® are brand names or trademark names; cola or soda on the other hand, are the generic or product names. Nike ® and Reebok ® are brand names or trademark names; sneaker or athletic shoe are generic or product names.
Unlike descriptive marks, generic devices will not become a trademark even if they are advertised so heavily that secondary meaning can be proven in the mind of consumers. The rationale for creating the category of generic marks is that no manufacturer or service provider should be given exclusive right to use words that generically identify a product.
A valid trademark can become generic if the consuming public misuses the mark sufficiently for the mark to become the generic name for the product. The prime examples of former trademarks that became the generic name for a product are ASPIRIN and CELLOPHANE. Current trademarks that were once considered to be candidates for becoming generic are XEROX and KLEENEX. XEROX has spent a great deal of advertising money to prevent misuse of its mark. By doing so, XEROX has likely avoiding the loss of its trademark.
The following words and phrases can be considered generic and therefore are incapable of functioning as a trademark:
Names that are fanciful, arbitrary, or suggestive are considered distinctive enough to function as trademarks. On the other hand, if a name is descriptive, the name can function as a trademark or service mark only if it has obtained secondary meaning. Generic names can never be a trademark.
Strength of the Mark
The “strength” of a mark is determined in part by where it falls on this spectrum. Fanciful marks are considered stronger than suggestive marks, and therefore are granted greater protection by the courts.
Fanciful marks:
Fanciful marks are names which have been created for the sole purpose of functioning as a trademark and have no other meaning than acting as a mark. Fanciful marks are considered to be the strongest type of mark. Examples of fanciful marks are:
Arbitrary marks:
An arbitrary mark has a common meaning that has no relation to the goods or services being sold. Examples of arbitrary marks include:
- APPLE (for computers)
- LOTUS (for software)
Suggestive marks:
Suggestive marks are marks that suggest a quality or characteristic of the goods and services. Suggestive marks require some imagination, thought, or perception to reach a conclusion as to the nature of the goods.
The following marks can be considered suggestive:
- MICROSOFT (suggestive of software for microcomputers)
- NETSCAPE (suggestive of software which allows traversing the “landscape” of the Internet)
Descriptive marks:
Descriptive marks (or more properly, “merely descriptive marks”) are those which merely describe the services or goods on which the mark is used. No trademark rights are granted to merely descriptive marks. Descriptive marks allow one to reach that conclusion without such imagination, thought or perception. Merely descriptive marks can be registered federally on the Supplemental Register
However, it is possible for descriptive marks to “become distinctive” by achieving secondary meaning. Secondary meaning indicates that although the mark is on its face descriptive of the goods or services, consumers recognize the mark as having a source indicating function. Once it can be shown that a descriptive term or phrase has achieved this “second meaning” (the first meaning being the generally understood meaning of the term or phrase), a protectable trademark is developed. Secondary meaning can be achieved through long term use, or large amounts of advertising and publicity.
Trademark Symbols
You can use the symbols TM for trademark or SM for service mark to indicate that you are claims rights to the marks without having federal registration. However, use of the TM and SM symbols may be governed by different local, state, or foreign laws. The federal registration symbol ® can only be used after the mark is actually registered in the USPTO. Even though an application is pending, the registration symbol ® may not be used before the mark has actually become registered.
Article by Dorisa Shahmirzai, Esq. Founder of IP Law Click