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Trademarks

The information on this page provides a brief description of the main requirements involved in trademarking a distinguishing symbol.  Additional resources regarding more comprehensive educational materials on the trademarking subject are available in the sidebar.  

Definition

  • A trademark grants an individual the legal right to exclude others from using a distinctive phrase, symbol, or other easily recognizable feature that is associated with a product or a service.

Protection Requirements

  1. Ownership - A merchant must use a mark consistently and maintain control of its use:
    1. Failure to maintain control of a mark renders a trademark liable to fall into the public domain, at which point trademark protection is no longer guaranteed under the law.
  2. Limited Territory - The state and region where a company does regular business.
  3. Public Notification – Established through use of the superscript symbol “TM”.
  4. Optional Registration
    1. Individuals can apply for federal registration with the U.S. Patent and Trademark Office (USPTO).
    2. If no other merchants file objections within five years, the USPTO registers the mark and notifies the applicant.
    3. The applicant is then considered the uncontested owner of the mark throughout the country.  A merchant can only use the ® symbol after the USPTO actually registers a mark, not while an application is pending.

Infringement Prosecution

  1. Federal - Case heard if the contested mark is registered and presumed to have the uncontested right to exclude others from use of the mark.
  2. State – Case heard if the contested mark is not registered.
    1. Factors examined include:
      • how long each merchant has used the contested mark,
      • how distinctive the mark is,
      • whether the merchants maintained control of their marks, and
      • whether they do business in overlapping geographical regions.
    2. Public policy interests focus on an estimation of the likelihood of confusion by the average consumer.

Protection Strength

  1. Protection is proportional to distinctiveness meaning a protected trademark must be easy to recognize if it is to serve as a quick discriminator. Depending on the likely ease of recognition, courts sometimes classify trademarks into three loosely defined categories:
    1. Distinctive trademarks - Made of a coined word or specially designed symbol, these trademarks are unique and are afforded the strongest protection under the law.  Examples of distinctive trademarks are "Xerox," the golden arches of McDonalds, and the BC logo.
    2. Suggestive trademarks - These trademarks describe a product but also hint at an origin or characteristic, typically with an unusual twist or combination of words. Examples in this fuzzy category might be "Ivory Soap," "Mister Donut," and "Wheat Thins".
    3. Descriptive trademarks - This category is the least distinctive; "marks" are composed of common words used in a common way. To receive any protection, these merely descriptive trademarks must have acquired a secondary meaning, for example through the public's long association of the phrase with a particular merchant.  "Builder's Warehouse," and "The Country's Best Yogurt," are examples.

Benefit

  1. Trademark protection helps consumers quickly distinguish among similar products and services.  This allows consumers to efficiently select a particular product that has established a superior reputation.
  2. Trademark protection excludes others from unauthorized appropriation of the good reputation established by a particular computer program or a research tool that has name recognition.