Trademarks – Defined

TRADITIONAL DEFINITION

A word, symbol, or device that is used to distinguish one’s goods or services from others. Simply put, a trademark is a “source identifier.”

EXPANDED DEFINITION

Includes slogans, colors, shapes, sounds, smells,trade dress and configurations.

Trademarks – Defined

→ Trademark law prevents a party from adopting a mark to represent its products/services, which is likely to lead to confusion on the part of the purchasing public as to the source or origin of the products/services.

→ Trademark protection does not, in general, prevent a product itself from being copied.

→ Trademark protection can prevent a party from unfairly benefiting from or damaging the customer recognition and goodwill developed in a product or company name.

→ Lasts forever with continued use and renewal registration

Levels

FANCIFUL

– coined words with no meaning to the public – like EXXON® gasoline, KODAK® cameras, XEROX® copiers.

ARBITRARY

– common words not associated with the goods or services – like APPLE® computers, BABY RUTH® candy bars.

SUGGESTIVE

– requires some imagination – like COPPERTONE® suntan oil, SWEETARTS® candy.

DESCRIPTIVE

– conveys an immediate idea of ingredients, qualities or characteristics – like PARK’N FLY® for parking at the airport and catching a plane.
→ Needs Secondary Meaning as acquired through extensive or exclusive use, advertising, or promotion.

GENERIC

– common name for an article or service and can never be a mark – like telephone, pump, paint.

Marking

• Mark products with ®, if the mark is registered.

• Mark products with ™ if in use, but not federally registered with the U.S. Patent and Trademark Office.


→ Provides limited protection in US.
→ Not valid in all countries.

• Maintain and preserve trademark equity by adhering to proper use rules.

Likelihood of Confusion

→ Similarity of marks:
• appearance, sound, commercial impression, connotation

→ Similarity of goods or services

→ Consumer confusion

Why Register?

→ Gives constructive notice to the public.

→ Your mark will show up on searches performed by others.

→ There is a presumption of ownership, which becomes conclusive after 5 years
(i.e., the ownership is “incontestable”).

→ Nationwide priority for federal registration.

→ Gives the owner the ability to stop importation of infringing goods.

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