When most people hear the word "trademark" they probably think immediately about what is called a federal trademark, which is a type of intellectual property in the United States. In particular, federal trademark registration creates intellectual property rights granted by the U.S. Federal Government that gives the owner or holder of the trademark the exclusive right to use the trademark in association with a class of goods or services within the Unites States.
A trademark or service mark is commonly a word, symbol, design, or combination of such, which (a) identifies the source of goods or services and (b) distinguishes such from the goods or services of others. For example, the word "NIKE" or Nike's so-called "SWOOSH" symbol denote that a particular pair of shoes, item of clothing, or other good(s) came from Nike while also distinguishing those goods from Nike's competitors.
Although trademarks and service marks are often words or symbols, a trademark or service mark can actually be a color, a sound, a smell, or almost anything else for that matter.
In the United States, we have a so-called "federal" system, in which the federal government has only those limited powers that are explicitly set forth in, or enabled by, the U.S. Constitution. Because the U.S. Constitution does not contain a "trademark" clause that would allow the federal government to expressly regulate trademarks, the federal government's power to regulate trademarks is made possible by the "Commerce Clause" or "Interstate Commerce Clause," which allows the federal government to "[t]o regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes."
Generally, in order for a mark to be registrable in the Principal Register, the mark must not be likely to cause confusion and must also be distinctive.
Federal registration permits a trademark or service mark owner a number of exclusive rights, including:
- The right to use the registered mark nationwide;
- The right to file for an injunction to stop the unauthorized use of a trademark;
- The right to file a trademark or service mark infringement claim for money damages;
In addition, once a mark has been registered for five (5) years, the exclusive right to use the mark has been conclusively established and cannot be contested.
Likelihood of Confusion
The standard used by the United States Patent and Trademark Office ("USPTO") when analyzing a mark is the likelihood of confusion that will exist in the market if the mark is used.
In AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, the Ninth Circuit Court of Appeals articulated an eight (8) factor test as to whether a mark is likely to cause confusion:
- Strength of the mark;
- Proximity of the goods;
- Similarity of the marks;
- Evidence of actual confusion;
- Types of marketing channels used;
- Type of goods in question and the degree of care expected of the purchase;
- Defendant's intent when selecting the mark; and
- Likelihood of expansion of the product lines.
No single one of these factors is dispositive; rather, each of these factors must be analyzed to determine likelihood of confusion.
When determining whether a mark is distinctive, courts generally classify marks into five different categories: 1) fanciful, 2) arbitrary, 3) suggestive, 4) descriptive, 5) generic.
Marks that not used in normal speech are quite unique and are called fanciful marks, such as: Verizon, Starbucks, Exxon, Kodak, and Xerox.
Marks that are completely abstracted from the goods/services with which they are associated are called arbitrary marks, such as: Apple, Adobe, Amazon, Chevron, 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 such as:
- Liquid Paper
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 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.
Other examples of descriptive marks include:
- Digital Computers
- Sharp Televisions
- Vision Center
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.
One peculiarity of the U.S. Federal System is that a trademark must first be "used in interstate commerce" before it can be registered on the USPTO's Principal Register. That is not to say that trademark applications cannot be filed without first using a trademark in commerce; rather, such an application is called an "intent to use" trademark application and the mark must be used in commerce within a certain time period after the trademark has been examined and approved for registration.
The USPTO has published the following interative timelines on it website, which provide significant detail about what a mark owner can expect during and from the registration process:
It's important to note that neither timeline covers every application scenario.
The USPTO may refuse to register a mark for any number of reasons, including: likelihood of confusion; genericness; offensive, merely descriptive, deceptively misdescriptive, merely a surname (primarily), merely ornamental, or primarily geographic or geographically misdescriptive.
This brief overview of some important considerations associated with trademarks and service marks is by no means comprehensive. Always seek the advice of a competent professional when making important financial and legal decisions.
Steve Cook is an Arizona trademark attorney at Cook & Cook. Although his office is located in Mesa, Arizona, he represents clients throughout the Phoenix, Arizona Metropolitan area including the following east valley cities: Scottsdale, Paradise Valley, Tempe, Chandler, & Gilbert.