Marketing August 1, 2018 BY eric@ericlittlelaw.com

A few things about Trademarks

One can write a great deal about trademarks, and I offer the following only to highlight some points I believe are not generally known or about which I have received questions.

A trademark is used to promote a good, a service mark to promote a service; both are often conflated and referred to as trademarks.

Trademarks are acquired through use in commerce and can arise without registration, although federal registration has many advantages.  Trademarks can be registered under state law; however the benefits are mostly procedural, except perhaps for Cannabis.  It is possible to register trademarks with respect to Cannabis in California, although the use in commerce must be lawful use.  That is, it must be pursuant to a license.

Trademarks validity is based on the first to use the mark in commerce, and local prior use of a trademark can defeat subsequent federal registration, in the geographic area in which the prior use occurred.  However, defending such prior use can get expensive so it is generally worthwhile to apply for federal registration shortly after your first use.  You can also file for registration if you have an genuine intent to use the mark.

Federal registration is easy.  The Unites States Patent and Trademark Office has a number of short videos on various aspects of the process.  Every trademark must have a designated class and description; lists of both are on the USPTO website.  If you stick to one of descriptions of use previously published by the USPTO registration is fairly inexpensive.  In many cases you can successfully register a trademark yourself.

To be valid, a trademark must meet certain requirements.

First, it should not be easy to confuse a trademark with another mark within the same trademark category.  If the mark is an image, the two images should not be similar.  But marks can also be confused because of similar spellings or meanings.  Even similar sounds even though the spelling of the words can different.

Also, you should choose a strong mark.  Here’s what the USPTO has to say.

A simple way to think about weak and strong marks is to picture a gauge that goes from weak to strong, or cold to hot.  The hotter the mark, the stronger it is!

The coldest or weakest marks aren’t even really marks at all.  They are generic words that are incapable of identifying source.  Think “BICYCLE” for “bicycles” or “MILK” for “a dairy-based beverage.”  These are common, everyday names for goods and services and are not registrable by themselves.

Descriptive terms are warmer than generic terms, but are still very hard to protect.  Descriptive terms directly tell you something about the goods and services and generally are not registrable without showing that a mark has, through long use, become a source identifier.

Think “CREAMY” for “yogurt” or “THE ULTIMATE BIKE RACK” for “a bicycle rack.”  These words merely describe a feature or quality of the goods and services.

Descriptive marks are harder to register and protect because they merely provide information about the goods and services.  They don’t “identify the source” of goods and services and “distinguish the source” of the goods and services from others. 

Moving along to suggestive marks, this is where things start to get warm.  As the name implies, they “suggest” qualities or characteristics of the goods and services, without actually describing them.

Think “QUICK N’ NEAT” for “pie crust” or “GLANCE-A-DAY” for “calendars.”  Suggestive marks are registrable and are the next best thing to the hottest and strongest types of marks: “fanciful” marks and “arbitrary” marks.

“Fanciful” and “arbitrary” marks are the easiest types of marks to protect because they are inherently distinctive and immediately function as source identifiers.  They are typically creative or unusual, so it is less likely that other parties are using them for related goods and services.

“Fanciful” marks are invented words with no dictionary or other known meaning.  For example, “BELMICO” for “insurance services.”

“Arbitrary” marks are actual words with a known meaning, but words that have no association or relationship with the identified goods and services.  For example, “BANANA” for “tires.”

Choosing a fanciful or arbitrary mark is a great way to help consumers identify the source of your goods and services and distinguish them from the goods and services of others.  These kinds of marks are immediately protectable