Trademarks, Service Marks & Trade Names
February 11, 2013
What are the differences between trademarks, service marks and trade names? Generally, a trademark is used to denote the origin or source of a particular good while a service mark is used to denote the origin or source of a particular service; however, a trade name is used to denote the company or entity that is offering the good or service.
Perhaps the best method to clarify the difference between trademarks/service marks and trade names is in terms of grammar: trademarks/service marks are adjectives while trade names are nouns. For example:
This Dell computer was made by Dell Inc.
The former reference to "Dell" is to a trademark, while the later reference is to a trade name.
Federal Trademarks & Service marks: From Fanciful to Generic
The amount of protection conferred upon a federal trademark/service mark is dependent upon how distinctive the mark is from competitors' marks and from everyday speech. Those marks that are the most distinctive receive significant protection that, unlike a patent or copyright, is not of limited duration. The following is a list of categories, in descending order, according the amount of protection with which a mark is provided.
Marks that are very unique and not used in normal speech are called fanciful marks.
A good example of a fanciful mark is that of Verizon as used to denote the communications-related goods and services offered by Verizon Communications Inc. The mark Verizon likely had no meaning before it was used as a mark for Verizon Communications Inc.
Other examples of fanciful marks include Starkbucks, Exxon, and Xerox.
Marks that are completely abstracted from the goods/services with which they are associated are called arbitrary marks.
A good example of an arbitrary mark is that of Apple as used to denote the technology-related goods and services offered by Apple Inc. The products sold by Apple Inc. under the mark Apple are not associated with the sale of fruit, let alone food, as might be expected for a product or service using such a mark.
Other examples of arbitrary marks include Chevron, Amazon, Adobe, and Sun.
Marks that intimate or allude to a good or service but are still somewhat abstracted from the types of goods and services with which they are associated are called suggestive marks.
A good example of a suggestive mark is that of Mustang as used to denote the car manufactured by Ford Motor Company. Although Mustang does suggest a product or service that may be fast and powerful, the word Mustang alone isn't exclusive to the muscle car; rather, it could also refer to a horse.
Other examples of suggestive marks include Blu-Ray, Liquid Paper, & Caterpillar.
Marks that are descriptive of the particular features, qualities, characteristics, or purposes of the goods and services with which they are associated are called descriptive marks.
Before descriptive marks are afforded trademark/service mark protection, however, they must attain "secondary meaning".
A mark generally attains secondary meaning after a long period of time (although there is no specific minimum required) and extensive advertising so that the mark becomes recognizable as associated with the source or origin of the product or service. In Kellogg Co. v. National Biscuit Co. (305 U.S. 111), the. U.S. Supreme Court articulated the following requirement as to secondary meaning: "It must show that the primary significance of the term in the minds of the consuming public is not the product but the producer."
A good example of a descriptive mark that has attained secondary meaning is the mark Windows as used to denote the operating systems and related software developed by Microsoft Corporation. The mark Windows is descriptive of an attribute of the graphical user interface implemented in the operating system. Further, the mark Windows, in the context of software, is likely synonymous with Microsoft Corporation.
Terms that are descriptive of a class of goods and services with which they are associated are called generic terms and are afforded no trademark or service mark protection. Such terms identify the actual goods or services as opposed to the source or origin of such goods or services, e.g. car, milk, or water.
Given the substantial variation in terms of protect-ability, based upon distinctiveness, it is likely wise to analyze the distinctiveness of a mark, in addition to the other more common considerations, when to selecting a trademark or service mark.
State Trade Names
Unlike trademarks and service marks, which can be registered at the federal level, there is no federal register of trade names. As such, trade names -- by themselves -- are only protected by state law. While this may seem problematic, it often isn't because the protections granted to a particular trademark/service mark are applicable to a trademark/service mark included in a trade name.
This brief overview of some important considerations associated with federal trademark and service mark law and state trade name law is by no means comprehensive. Always seek the advice of a competent professional when making important financial and legal decisions.