Overview of Trademarks: The term trademark is frequently used to describe different types of devices that label, identify and distinguish products or services in the marketplace.
Consumers often make their purchasing choices on the basis of recognizable trademarks, such as Coke, McDonald's or Nike. The main thrust of trademark law is to make sure that trademarks don't overlap in a way that causes customers to become confused about the source of a product.
Trademark Categories & Criteria
In order to serve as a trademark, a mark must be distinctive - that is, it must be capable of identifying the source of a particular good. In determining whether a mark is distinctive, the courts group marks into four categories based on the relationship between the mark and the underlying product:
(1) arbitrary or fanciful,
(2) suggestive,
(3) descriptive, or
(4) generic.
Arbitrary. An arbitrary or fanciful mark is one that bears no logical relationship to the underlying product. For example, the words "Exxon" and "Kodak" bear no inherent connection to their underlying products (respectively, gasoline and cameras/computers).
Suggestive. This is a mark that evokes or suggests a characteristic of the underlying good. For example, the word "Coppertone" suggests the color of a deep sun tan, but does not specifically describe the actual product. Some exercise of imagination is needed to associate the word with the product.
Descriptive. A descriptive mark directly describes, rather than suggests, a characteristic or quality of the underlying product (e.g. its color, odor, function, dimensions or ingredients). For example, "Holiday Inn" and "All Bran" both describe some aspect of their underlying product or service (respectively, hotel rooms and breakfast cereal). Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have acquired "secondary meaning." This occurs when the consuming public primarily associates that mark with a particular producer.
Generic. A generic mark is a mark that describes the general category to which the underlying product belongs. For example, the term "Computer" is a generic term for computer equipment. Generic marks are entitled to no protection under trademark law. Thus, a manufacturer selling "Computer" brand computers (or "Apple" brand apples, etc.) would have no exclusive right to use that term with respect to that product.
Service Marks:
While trademarks promote products, service marks promote services and events. Generally, when a business uses its name to market its goods or services in the yellow pages, on signs or in advertising copy, the name qualifies as a service mark. Some familiar service marks include Jack in the Box (fast food service), Blockbuster (video rental service), and the Olympic Games' multi-colored interlocking circles (international sporting event).
Certification Marks:
These are symbols, names or devices used by an organization to vouch for products and/or services provided by others, like the Good Housekeeping Seal of Approval. This type of mark may cover characteristics such as regional origin, method of manufacturing, product quality and service accuracy. Some examples of certification marks include: Stilton cheese (a product from the Stilton locale in England) and Carneros wines (from grapes grown in the Carneros region of Sonoma/Napa counties).
Collective Marks:
These are symbols, labels, words, phrases or other marks used by members of a group or organization to identify goods, members, products or services they render. Collective marks are often used to show membership in a union, association or other organization. For example, the letters "ILGWU" on a shirt label is the collective mark that identifies the shirt as a product of a member of the International Ladies Garment Workers Union. The use of a collective mark is restricted to members of the group or organization that owns the mark. If the group wants to identify its product or service, it must use its own trademark or service mark.
Trade Dress:
A product may also come to be known by its distinctive packaging - Kodak film or the Galliano liquor bottle, for example - and a service by its distinctive decor or shape, such as the decor of Banana Republic clothing stores. Collectively, these types of identifying features are termed "trade dress." Because trade dress often serves the same function as a trademark or service mark (the identification of goods and services in the marketplace), trade dress can be protected under the federal trademark laws and in some cases registered as a trademark or service mark with the Patent and Trademark Office.
Differences Between Trade Names and Trademarks
The name that a business uses to identify itself is called a "trade name." This is the name the business uses on its stock certificates, bank accounts, invoices and letterhead. When used to identify a business as an entity for non-marketing purposes, the trade name is given some protection under state and local corporate and fictitious business name registration laws, but it is not considered a trademark or entitled to protection under trademark laws.
If, however, a business uses its name to identify a product or service produced by the business, the name will then be considered a trademark or service mark and be entitled to protection if it is distinctive enough. For instance, Apple Computer Corporation uses the trade name Apple as a trademark on its line of computer products. In much the same manner, a domain name used to identify an Internet-based business qualifies as a mark when it is used in connection with a website that offers e-commerce and/or services to the public.
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