How do I actually get a trademark?

In the last section, What Is The Trademark Process Like?, we reviewed the nature of the trademark application process. Now, we want to outline the specific substantive requirements it demands. Briefly, it must be distinctive and it must be used in the sale of goods or services but what follows is a longer discussion on both of these points.

USED IN COMMERCE.

You can acquire trademark rights by doing one of the following:

• Use the mark in commerce before anyone else.
  Generally, if you start selling goods or services under a mark, then you will acquire trademark rights as long as no one else is already doing that. This rule is qualified, however, to the extent that you only achieve protection in the geographic region in which you are using the mark. Additionally, the one large exception to this rule is if it is a descriptive mark because that must also obtain secondary meaning before it receives protection. This will be discussed in more detail in the following paragraphs.
• Registering the trademark with the United States Patent and Trademark Office (USPTO).

The other means of obtaining trademark rights is if you register the mark with the USPTO and genuinely intend to use the mark in commerce. This will give you protection nationwide. However, your rights will be subordinate to the rights of anyone already using that mark. In other words, registration with the USPTO gives you superior trademark rights in all areas of the country where the mark is not being used.

DISTINCTIVE.

Besides fulfilling one of the above options, you also must show that your mark is distinctive. This is the second prong of the trademark process. There are four basic categories of marks with varying levels of protection. Here is an overview of all of them:

Arbitrary/Fanciful: These marks have no relationship or connection to the particular good or service that they represent. The law looks at them as inherently distinctive and, as such, they are afforded a high degree of protection. An example of this kind of mark is the Nike “swoosh”.

Suggestive: The law also views suggestive marks as inherently distinctive and gives them a substantial amount of protection as well. These marks suggest or evoke some element of the good or service they represent. An example of this kind of mark is Blu-ray.

Descriptive: Descriptive marks describe the good or service and are not inherently distinctive. Therefore, to receive trademark protection, they also must obtain secondary meaning in the marketplace. Secondary meaning is defined as the public’s association of a mark with a certain producer. Note, they do not have to connect the mark to the product being sold, just to the source or producer. The courts use a variety of factors to determine secondary meaning including the number of sales, extent of mark usage, and consumer opinion, to name a few.

Generic: Generic marks denote the category that a product comes from and hold no distinctive value. They are afforded no trademark protection because the public needs these words and images to communicate in commerce and doing so would unduly restrict the market. Additionally, it is important to add that words can become generic over time through custom and practice.

In the next article, we discuss what constitutes trademark infringement.

© 2016 John V. Robinson, P.C.