What Trademark Law Protects

Introduction

A trademark is a symbol, logo, design, or phrase that distinguishes a company’s goods or services from others. Trademark law protects the rights of the trademark owner and helps to prevent consumer confusion and intellectual property infringement. This guide will explore what trademark law protects and how it is enforced

What are Trademarks?

A Trademark, at  its very essence, helps consumers identify the source of products (or “goods” in legalese). It also helps companies build brand recognition and loyalty. A trademark can be a distinctive symbol, word, phrase, figure, picture, letter, color, sound, or scent that you use to distinguish yourself from your competitors. 

You may have heard the phrase “service mark” before. While a trademark and service mark are not technically the same thing, they serve the same purpose. Here’s a useful way to think about it: A trademark is like your commercial signature when it comes to products, while a “service mark” is your commercial signature when it comes to services. However, be mindful that the word “trademark” can be used interchangeably for products and services. And yes, you can definitely have more than one trademark.

Types of Trademarks

 
There are a couple types of trademarks (and  yes you can have both). Types of trademarks include:

Word Marks:

A Word Mark is the broadest form of protection because it only registers and protects words, phrases, numbers, letters, or a combination of these things without claiming any ownership to a particular design or style. It’s barebone. Here, you’re only claiming rights to the actual words, phrases, letters, numbers, or a combination thereof (sorry for the repetitiveness). Essentially, if you have Word Mark protection, you can use your logo with as many designs and styles as you want. 

A company’s name or logo are common examples of Word Marks that can be protected under US Trademark Law. However, it is important to note that they must not be (legally) generic or descriptive. 

For example, the company Apple was able to successfully trademark the word “apple” and its logo in relation to its computer and technology products. Why? Because apples have nothing to do with computers or technology. Other examples of word marks include “Coca-Cola” and “Google.” 

If you’re thinking about your brand as a long-term thing, you should definitely consider having Word Mark protection. 

Design Marks: 

A Design Mark is a much more limited form of protection because it only registers and protects the exact design or logo for which it was filed. Here, you’re only claiming rights to the design or style in which such words, phrases, letters, or images are presented. 

For example, the particular font style, size, color, etc. Examples of design marks include the Nike swoosh and the Apple logo, as previously mentioned.

Design Mark protection makes sense when you really like your stylized logo, design, or image and plan on using it for many years without making any changes (however slight).

Non-Traditional Trademarks:

Non-traditional trademarks include things like shapes, sounds, scents, colors, 3D objects and even motion. These types of trademarks have become increasingly popular in recent years and are often used by companies to distinguish their products from those of their competitors. 

Examples of some non-traditional trademarks include the shape of the classic Coca-Cola bottle, the MGM lion’s roar at the beginning of films, and the little holograms on credit cards.

While they can be difficult to protect and enforce, non-traditional trademarks can be an effective way to build brand recognition and stand out in a crowded market.

What Does Trademark Law Protect?

US Trademark Law–the Lanham Act–essentially protects the rights of trademark owners by preventing others from using a similar mark that may cause confusion among consumers. This protection helps to ensure that consumers can easily identify the source of the goods or services they purchase, and it helps to prevent intellectual property infringement.

US Trademark Law also helps to protect the goodwill and reputation that a company has built through the use of its trademark. If another company were to use a similar mark, it could dilute the value of the original trademark and harm the company’s reputation.

Strength of Trademarks

The strength of a trademark (or service mark) depends on its uniqueness. The five legal standards of trademarks, in order of strength, are:

Fanciful Marks: These are marks with made-up words that only have meaning in relation to a specific product or service. Fanciful marks are the strongest due to their absolute distinctiveness. Examples include “Google,” “Pepsi,” and “XEROX”. These words only exist as a means of branding their respective products and would otherwise have no meaning.

Arbitrary Marks: These are marks that contain real words with a meaning that is completely unrelated to the underlying product or service to which they are tied. An example is "Amazon" which relates to an online marketplace, not the rainforest.

Suggestive Marks: These are marks that imply some kind of quality of the underlying product or service. They require some thought to make the connection between the mark and the product or service. “Netflix” is an example of a suggestive mark because it suggests that movies can be watched online.

Descriptive Marks: These marks actually describe the product or service. Descriptive marks can only be registered as trademarks if they have a secondary meaning. For example, “Apple” would be a descriptive mark if it was used by an orchard, but since “Apple” sells computers it falls under the arbitrary category.

Generic Marks: These are the weakest type of marks and, as a general rule, cannot be registered as trademarks. A mark is (legally) generic if it is the common name that identifies the type of product or service, as primarily understood by the consumers of such product or service.   For example, a brand of coffee called “coffee.” 

To determine if your mark is generic, the law does a two-part test:

1. What is the general type of products or services at issue here?
2. Do consumers of these products or services understand the mark to primarily identify (or describe) that general type?

If the answer is yes to both questions, then your mark is generic.

Two Trademarks for the Same Word?

When it comes to words and phrases, some people mistakenly believe that they will have absolute ownership over the particular word or phrase for all purposes if they trademark it. That’s not how it works. US Trademark Law will allow someone else to trademark the same word or phrase if the underlying products are different and there is no likelihood of consumer confusion (a not-so-simple legal standard). 

Why? Because trademarks exist to distinguish you from your competitors and the fundamental purpose of US Trademark Law is to prevent consumer confusion.

If you're considering trademarking something, it's always important to check if a similar trademark already exists. With some study time & patience, you can “easily” do this by visiting the USPTO's  Trademark Electronic Search System (TESS) database. Simply go to the website and start searching for existing trademarks related to your idea. This will give you a better understanding of whether or not your proposed trademark is available for registration.

Conclusion

US Trademark Law is an important tool for protecting the rights of trademark owners and preventing consumer confusion and intellectual property infringement. This article has explored the things that US Trademark Law protects. If you have any further questions about trademarks or looking to register one, it is always best to consult with a licensed attorney.