A trademark is any distinctive symbol that is used to identify and distinguish a good or service of one seller or provider from the goods and services of others. In short, trademarks are identifiers of source. Although the primary legal justification for trademark rights is to protect consumers from source confusion, the recognition of trademark rights also serves the secondary economic benefit of permitting providers of goods and services to develop value in their brands.
Trademark rights and registration
In the United States, trademark rights are developed through appropriate use, even in the absence of a trademark registration issued by an individual state or the United States Patent and Trademark Office (“USPTO”). These unregistered, “common law” rights are generally enforceable against “junior” third-party marks with which there is a likelihood of consumer confusion as to source, at a minimum within those geographic regions of the country in which the trademark owner has appropriately used the mark.
However, there are many benefits associated with obtaining a registration of a trademark from the USPTO, including but not limited to: nationwide rights and recognition of the mark; shifting of the burden of proof to a potential infringer on such issues as ownership, distinctiveness, and first use dates; having a record of the registration appear in the USPTO’s publicly-searchable database, making it more likely that a later-comer will discover the prior rights and refrain from adopting a mark that would be confusingly similar with the registered mark; and the right to use the registered trademark symbol ®, which often discourages others from adopting a too-similar mark.
Subject to some caveats, so long as a mark is used continuously, legal protection for that mark will not expire. In fact, there are marks registered with the USPTO in the 19th Century that remain in force today. Conversely, failure to properly use a mark for a period of time—typically three years—can lead to loss of rights in that mark and leave any trademark registration vulnerable to a cancellation proceeding. A mark owner must also take reasonable steps to “police” confusingly-similar mark usage by a third party, or else the mark owner’s legal rights may be jeopardized.
Trademark searching and selection
Every consumer is aware of the ability of a word, logo, or slogan to serve as a source identifier, but trademark rights can also result—under appropriate circumstances—from distinctive and non-functional uses of sounds, colors, packaging, product configurations, and/or a good or service’s overall “look and feel.” In theory, any perceptible symbol that is distinctive and non-functional with respect to an associated good or service can develop trademark rights as a source identifier if properly used.
Mark selection is a critical element of any brand development strategy. To be registrable, a mark must first be distinctive, in that it is capable of distinguishing the good or service of one party from those of other parties. Said another way, a mark is distinctive if the “likelihood of consumer confusion” question can be answered in the negative. A registrable mark must also be devoid of any terms that might deceive consumers with respect to the geographic origin or other qualities of the associated good or service. Last, but certainly not least, to be registrable a mark must not be “merely descriptive” or generic of the associated good or service or any characteristic thereof. For example, the word “Apple” may not be able to function as a mark for apple juice or an apple orchard, but is capable of functioning as a strong mark for computers and smartphones.
Although there is no legal requirement to search the availability of a mark prior to its adoption in connection with a good or service, it is invariably sound business strategy to do so. Trademark searches typically focus on two inquiries: (1) clearance, i.e., whether a mark can be adopted in connection with a particular good or service without subjecting a business to an accusation of infringement; and (2) registrability, i.e., the likelihood that a party will be able to obtain a registration for a mark in connection with a particular good or service, taking into consideration not only third-party trademark properties but also the distinctive nature of the selected mark. A qualified professional may be necessary to help you confidently interpret the findings of any trademark search.
James J. Aquilina is an attorney and business counselor with extensive experience in all aspects of U.S. intellectual property law, including utility and design patent, trademark, and copyright law, with emphases on rights procurement, IP portfolio development and management, rights enforcement, and licensing. He is a graduate of Rutgers University School of Engineering and the University of Pennsylvania Law School. He can be reached by e-mail at firstname.lastname@example.org.
The contents of this article are solely for educational purposes and do not constitute legal advice. Any opinion provided in this article is solely that of the author and not that of his employer or any client thereof.