Rodrick J. Enns and Julia C. Archer
Enns & Archer LLP
A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and service marks.
Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark.
Acquiring Trademark Rights
Trademark rights arise from either (1) actual use of the mark, or (2) the filing of a proper application to register a mark in the Patent and Trademark Office (PTO) stating that the applicant has a bona fide intention to use the mark in interstate or foreign commerce.
Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide. Other benefits of federal registration include the ability to bring an action in federal court against an alleged infringing use, the ability to file the mark with U.S. Customs to prevent importation of infringing foreign goods, and the ability to use the registration as a basis for obtaining registration of the mark in foreign countries.
In determining registrability of a mark, one factor the PTO will consider is the distinctiveness of the mark. Similarly, the distinctiveness of the mark is important in an infringement analysis in court. In trademark law, there is an established "spectrum of distinctiveness."
The Spectrum Of Distinctiveness
The capacity of words to serve as trademarks depends on the distinctiveness, or ability to serve as a symbol of source, of the word as applied to specific goods or services. Terms are generally assigned to one of four groups, which, from most distinctive to least distinctive, are.
The more distinctive a particular word is as applied to particular goods (i.e., the higher on the above list it appears), the more protection it is accorded under trademark law. Brief explanation of the categories follows.
Arbitrary or fanciful marks are terms which by their nature present no plausible basis for consumers to think that they are being used for any non-trademark purpose, such as to merely describe some characteristic of the goods. Since such terms have no conceivable purpose other than to symbolize the source of the goods, it is presumed that they do exactly that. Fanciful marks have this quality because they have no independent meaning whatsoever. Examples are KODAK for film and EXXON for gasoline. Arbitrary marks have this quality because, even though they have a pre-existing recognized meaning, that meaning has no logical connection whatsoever to the goods to which they are applied, such as APPLE for computers or AMAZON for bookselling services.
Suggestive marks are words which have some relation to the goods to which they are applied, but fall short of directly describing a quality or characteristic of the goods, and instead require some imagination on the part of the consumer to make a connection. Examples are TURTLE WAX for car polish (indirectly suggesting that the product produces a finish on cars as hard as a turtle’s shell) or MUSTANG for automobiles (indirectly suggesting that the car has the power and speed of a mustang).
Descriptive marks are words which directly describe an ingredient, quality, characteristic, function, feature, purpose or use of the goods. Unless consumers were already familiar with the word as a brand name for this product, they might just as likely assume that the term was simply being used to describe the product, not to identify its source. Examples are SHEER for nylon stockings or SOFT for facial tissues.
Generic terms are those which serve as a common name for a category or sub-category of goods, such as "furniture," "soft drinks," "crackers," and "saws."
Note that where a particular term falls in the above spectrum cannot be determined except in the context of the goods to which that term is applied. APPLE is generic and entitled to no protection as applied to fruit, but it is arbitrary and entitled to the highest protection as applied to computers.
The reality is that these four categories are actually a somewhat arbitrary structure imposed on what is really a graduated continuum of more or less distinctive words. Nonetheless, for purposes of the law, a proposed mark will usually be assigned to one or another of the four categories, and the category to which it is assigned has significant consequences for the registrability and enforceability of the mark.
Consequences For Registrability
Fanciful, arbitrary and suggestive marks are often referred to as "inherently distinctive", and are registrable as trademarks simply upon proof that they have been or are intended to be used on specific goods.
Descriptive marks, by contrast, may not be registered on the Principal Register unless the owner provides satisfactory proof that, notwithstanding the original descriptive meaning of the word, the owner has used, advertised and promoted the word as a mark for its goods to such an extent that a substantial portion of consumers have come to recognize it as a symbol of source anyway. This is often called "acquired distinctiveness," or, in somewhat more arcane terminology, "secondary meaning" (the acquired trademark meaning of the term being "secondary" to the primary descriptive meaning).
A term that is generic for the goods to which it is applied is not registrable under any circumstances. If a term has already been registered, even for a significant period of time, the registration is always vulnerable to cancellation if the challenger can establish that the term is or has become generic for the goods to which it is applied.
Consequences For Enforcement
There are two relevant dimensions to the legal rights attaching to trademarks: the ability to protect one’s right to continue using the mark, and the ability to prevent others from using the same mark or one similar to it. The distinctive quality and strength of the mark is of benefit almost exclusively for the latter.
In general, assuming priority of use, the ability to stop the use of a similar mark depends on proving that the use of the junior mark is likely to cause confusion among consumers, that is, that consumers seeing the junior mark are likely to believe incorrectly that the goods on which the junior mark appears come from, or are authorized or approved by, the owner of the senior mark. Once priority is established, this question of likelihood of confusion is the dispositive issue in virtually every infringement case.
The courts employ a multi-factor test to decide whether there is a likelihood of confusion in a particular case. While formulations vary somewhat from court to court, and while the courts generally acknowledge that no single factor is determinative and that all factors must be considered in "flexible interplay," nonetheless the first factor in every version of the likelihood of confusion test is the strength of the senior mark. Most courts recognize this as one of the most important factors, and some, including the Fourth Circuit Court of Appeals (whose jurisdiction includes North Carolina), have explicitly held that proof of a very strong and well-known senior mark, coupled with evidence of actual confusion of consumers by the junior mark, is sufficient to make out a per se case of infringement without proof of any of the other factors at all.
Of course, "strength of the mark" in this context means more than just the mark’s inherent distinctiveness (i.e., where it falls on the distinctiveness spectrum). It also depends on acquired distinctiveness: how well-known the mark is to consumers, how many other similar marks are in use by third parties, etc. Still, inherent distinctiveness is an important factor in the calculus. Thus, arbitrary or fanciful marks will be presumed to be strong with little additional proof of acquired distinctiveness. Suggestive marks will also enjoy this presumption, but probably to a somewhat lesser (and totally subjective) degree.
Descriptive marks, by contrast, are presumed to lack any strength whatsoever, and enforcement rights arise only upon proof of acquired distinctiveness. This burden of proof is certainly surmountable, and if a mark is in fact proved to be widely recognized among consumers, it can be equally as strong whether it is descriptive or inherently distinctive. Even so, the descriptive character of the mark creates a substantial additional obstacle to successful enforcement.
Generic terms are inherently incapable of serving as trademarks at all. While there are still some possible grounds to prevent a bad faith user from copying another’s use of a generic term in such a way as to intentionally mislead consumers, as a practical matter a finding that a term ostensibly being used as a mark is in fact generic results in the loss of all trademark rights in that term.
Registration of Trademarks
In the U.S., the process to register a trademark can take anywhere from one year to several years, depending on the basis for filing and the legal issues which may arise in the examination of the application. The U.S. is one of a minority of countries which do not require registration as a condition of enforceable trademark rights. While trademark rights arise in the U.S. solely from prior use, registration does afford a number of very important benefits, including presumptions of distinctiveness and of nationwide use, and the availability of escalated damages and attorneys fees for intentional infringement.
Most states also have trademark registration laws of one kind or another, but few offer the substantive and procedural benefits of federal registration. That, together with the burden of securing and maintaining registrations in multiple states, makes federal registration a compelling choice for all except very small and localized businesses.
Once registered, the term of a federal trademark registration is 10 years. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled. As long as the trademark owner continues to use the mark to identify its goods or services, the registration can be renewed an unlimited number of times and the trademark rights can last indefinitely.
Anyone who claims rights in a mark may use the ™ (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The only purpose for using these symbols is to provide notice to the public of a claim of trademark. The claim may or may not be valid, and these symbols have no legal effect on the question of whether valid trademark rights exist or not.
The registration symbol, ®, may only be used when the mark is registered in the USPTO. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. The federal registration symbol should only be used on the particular goods or services that are the subject of the federal trademark registration. Unlike the ™ symbol, use of the ® symbol is prescribed by statute, as are the consequences for improper use.