by Anna Wang, Legal Researcher at Shake
There’s no question that trademarks are a part of everyday life. They’re in the news all the time (see: the rise and fall of Dumb Starbucks or Beyoncé and Jay-Z’s failed bid to trademark their baby’s name). But what is a trademark, really?
What’s a trademark?
A trademark is a word, name, or symbol that is used to distinguish a manufacturer’s products from those of other manufacturers and to indicate the source of the product.1 So, a trademark incorporates both words and logos associated with the manufacturer. For example, the word “Nike” and the swoosh symbol are trademarks for Nike. A service mark is like a trademark, except it identifies the source of services rather than products.2 When people refer to “marks” in the trademark context, they might be talking about either trademarks or service marks.
What qualifies as a trademark?
The defining trait of a trademark is that it is distinctive enough to distinguish itself from its competitors. There’s a spectrum of distinctiveness in trademark law,3 and the more distinctive a mark is, the more protection it gets. At one end of spectrum are generic marks (marks that describe the category of the product), which get no trademark protection. At the other end are fanciful marks — made-up words — as well as arbitrary marks, which are words that don’t relate to the category of the product, like “Apple” computers.
How do you enforce a trademark?
You can sue if someone has infringed upon your mark. This can happen when someone uses a mark that’s likely to cause confusion with yours.4 Courts look at several factors to determine if a mark is likely to cause confusion:5
1. The strength of the plaintiff’s mark: the strength of the mark itself (is it distinctive or suggestive?) and the strength of the mark in the marketplace (has it acquired a strong association in consumers’ minds?)
2. The degree of similarity between the two marks: not meant to be a side-by-side comparison, but a comparison of the impression they give to consumers
3. The proximity of the products: how close they are to each other in the marketplace (are they in the same category or closely related categories?)
4. The likelihood that the plaintiff will bridge the gap: how likely the owner would expand into the category of the allegedly infringing product (e.g., a coffee shop expanding into its own line of bottled coffee drinks sold in grocery stores)
5. Actual confusion: buyers’ actual confusion, as shown by anecdotal or survey evidence
6. The defendant’s (lack of) good faith in adopting its own mark: if the defendant adopted the mark intending to copy the plaintiff’s mark
7. The sophistication of the buyers: if the buyers are savvy and more discerning (e.g. consumers of luxury goods), it’s less likely they would be confused by the marks.
Legislation has also established another basis for suing for trademark infringement, “dilution.”6 Dilution protects famous marks from blurring and tarnishment. Blurring happens when a similar mark impairs the distinctiveness of the famous mark, for example “The Other Red Meat” impairing the distinctiveness of “The Other White Meat.”7 Tarnishment happens when a similar mark harms the reputation of the famous mark, as with the use of “No Name,” a mark used to sell high-quality food products, in reference to an energy drink formerly called “Cocaine.”8
Filing for trademark protection
You don’t need to register your trademark in order to get trademark protection or to use the ™ symbol, as long as you are using the mark in a way that some of the public associates your mark with your product,9 though your use can’t be for the sole purpose of establishing trademark rights.10
You can register your mark with the U.S. Patent and Trademark Office, and doing so can bring you an array of rights that give you a huge leg up if you ever get into a legal contest with someone,11 including legal ownership of the mark and the exclusive right to use the mark nationally.12 Registering your mark can also be a strategic maneuver–say, if you start a hybrid croissant-doughnut craze and want to fend off Cronut® imitators or if you’d like to prevent competitors from piggybacking off of your addictive Candy®-matching game.
There are a few bars to getting your mark approved. For example, your mark will not be approved if it’s immoral or scandalous, the name of a living person, similar to another registered mark such that it’s likely to cause confusion, or is generic or descriptive without secondary meaning.13
After your mark is approved, you can use the ® symbol as a trademark notice.14
The trademark filing process can be complicated, and it’s a good idea to hire an experienced attorney to help.
- 15 U.S.C. § 1127. ↩
- Id. ↩
- Marks may be classified as, in ascending order of the degree of protection afforded to them, (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). Generic marks refer to the category of a product (e.g. “laptop” or “computer” when it comes to laptops) and cannot be trademarked. At the other end of the spectrum, fanciful marks are made-up words. Arbitrary marks bear no relation to the category of the product (e.g. “Apple” for computers) and are also immediately eligible for trademark registration. Suggestive marks suggest characteristics that tend to be associated with the product (e.g. “7-Eleven” for a convenience store), whereas descriptive marks directly describe the product (e.g. Foodland for a grocery store). Descriptive marks may get trademark protection only when the mark has gained secondary meaning–when consumers associate the descriptive term with the product. Keep in mind that a trademark is associated with its particular category of goods. For example, a seller of maternity wear could use “Apple” as a mark, and a seller of cleaning products could use “Nike.” ↩
- 15 U.S.C. § 1114, 1125. ↩
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). There are different tests among the circuits, but the Second Circuit test is very common and includes many of the factors other tests use. ↩
- Federal Trademark Dilution Revision Act, Pub. L. No. 109-312, 120 Stat. 1730 (2006) (codified at 15 U.S.C. §1125(c) (2006)) (amending Federal Trademark Dilution Act, Pub. L. No. 104-98, 109 Stat. 985 (1996)). Dilution is at odds with the traditional form of infringement. Consumers aren’t likely to be confused by the marks in a dilution dispute, because the harmed mark is eligible for dilution protection due to the strength of its mark. The rationale behind dilution is that, even though consumers suffer no confusion with famous marks, these famous marks will lose their value over time if others can chip away at their distinctiveness or reputations. The resources put into building the distinctiveness and reputations of famous marks will have gone to waste. ↩
- National Pork Board & National Pork Producers Council v. Supreme Lobster & Seafood Co., Opposition No. 91166701 (T.T.A.B. June 11, 2010) (the Trademark Trial and Appeal Board made this precedential ruling denying Supreme Lobster and Seafood Company’s application for “The Other Red Meat” for fresh and frozen salmon, finding that it would blur the National Pork Board and the National Pork Producers Council’s “The Other White Meat” mark). ↩
- J & B Wholesale Distrib., Inc. v. Redux Beverages, LLC, 621 F. Supp. 2d 678, 688 (D. Minn. 2007). On the whole, however, courts have been reluctant to find dilution, both by tarnishment and by blurring. ↩
- See Tally-Ho, Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018, 1022 (11th Cir. 1989) (“Under the common law, trademark rights are appropriated only through actual prior use in commerce”; “actual and continual use” is required as well). “Use in commerce” doesn’t require that the products have been sold, but that the use has been sufficiently public for some of the public to associate the mark with the product. See Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193-95 (11th Cir. 2001). ↩
- Your use of the mark must be a “bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. § 1127. ↩
- Upon successful registration, your ownership of the mark is incontestable and cannot be challenged after five years of continual use of your mark in commerce. 15 U.S.C. § 1065. The registration of your mark serves as nationwide constructive notice of your ownership of the mark, which means that other parties are presumed to have had notice of your ownership of your mark even if they weren’t actually aware that you had ownership of the mark. 15 U.S.C. § 1072. You can bring an infringement suit in federal court. 15 U.S.C. § 1121. If you win, you can elect to recover statutory damages or recover defendant’s profits, damages sustained by you, and costs incurred in bringing the action, and, in the case of counterfeit marks, get triple the amount of defendant’s profits or your damages. 15 U.S.C. § 1117. ↩
- 15 U.S.C. § 1057. ↩
- 15 U.S.C. § 1052. ↩
- 15 U.S.C. § 1111. ↩