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What is a Trademark?

A trademark is a word, name, phrase or symbol used to identify the source or origin of a good or service. Trademark rights arise through use of the trademark in association with a good or service. For this reason, naked assignments of trademarks are not allowed. A valid assignment must also assign the goodwill associated with the trademark. As soon as a trademark is used in commerce in association with a good or service, common law rights to the trademark attach. While not nearly as powerful as a federal trademark registration, common law rights can still be effective in obtaining an injunction or a judgment against an infringer.

The protection afforded a particular trademark depends in large part on how descriptive the mark is of the particular product or service provided in association with the mark. For example, if the product is apples, the mark “APPLE” would be deemed “generic,” the mark “RED” would be deemed “descriptive,” the mark “DEVIL’S FRUIT” would be “suggestive,” the mark “ROYAL” would be “arbitrary,” and the mark “QWIPPLE” would be “fanciful.” These distinctions are important as generic marks are neither protectable nor registerable, while suggestive, arbitrary and fanciful marks are both protectable and registerable.
Descriptive marks fall into two categories—the descriptive and the merely descriptive. Descriptive marks, while often not registerable in and of themselves, may be registerable if the owner can demonstrate that consumers have attached a secondary meaning to the mark. Secondary meaning attaches when, in the minds of consumers, the trademark is associated more with the particular product than with the word’s ordinary meaning. If a trademark is determined to be merely descriptive, however, the mark is not federally registerable. The United States Patent and Trademark Office has determined that in such cases the descriptive nature of the mark is such that no amount of advertising or sales would be sufficient to override the descriptive connotaion of the mark.

Trademarks are not limited to words, but include logos and symbols, and may even include such diverse attributes as color, in the case of pink fiberglass, sound, as is the case with the NBC chimes, or scent, for floral scented yarn. Trademarks typically associated with the Internet include .com domain names (of which over 30,000 are presently pending), animated browser icons, and “e” (for electronic), “i” (for Internet), and “o” (for online) marks, such as E-VIDEO or I-MUSIC.

As with any other type of trademark, the types of protection available range from common law protection, which attaches to a protectable mark as soon as it is used in association with a good or service, to state law registration, to federal law registration. While state law protection provides some added benefit over common law registration, it is no substitute for a full, federal registration, the benefits of which we will discuss in the next blog.

Brett Trout

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