Protecting Your Brand: What CEOs Need to Know About Trademark Law

Protecting Your Brand: What CEOs Need to Know About Trademark Law

Trademark

A trademark is a device by which a business can identify their own product and distinguish it from others. It will typically be a word, name, or symbol which can be attached to a product. For a mark to be considered a trademark, it must be in use commercially in association with the product it represents.

As a general rule, more unique trademarks are more easily differentiated from others and thus more easily protected in a legal capacity. The four basic categories into which a trademark will generally fall (sorted by unique validity) are: generic, descriptive, suggestive, or arbitrary.

  • A generic trademark is simply a noun. It says what the trademarked product is. A car. A lamp. These cannot possibly receive exclusive trademark       rights.
  • A descriptive trademark adds a simple description to the product. Common descriptive trademarks refer to purpose or geographical source. These also cannot be made exclusive.
  • A suggestive trademark is a descriptive trademark that has an established second meaning. The key difference from a descriptive trademark is that a suggestive trademark has managed to adopt a unique connection with a specific product.
  •  An arbitrary trademark is the most identifiable and legally protectable because they are unique creations which are by definition not even recognizable words.

In the United States, trademark law is primarily controlled by federal statutes. Some state-level trademark protection exists, but in a form that is not as comprehensive or practical as federal trademark protection. In order to qualify for federal trademark protection, a mark must be in use in interstate commerce in association with the relevant goods and services. Federal trademark registrations are filed with the United States Patent and Trademark Office and granted in 10 year terms which are renewable as long as the trademark remains in use. If one wishes to obtain exclusive rights to a trademark which is not yet in use (but will be within a reasonable amount of time), they may reserve it by filing a trademark application. A reserved trademark will not become registered until it has entered use. The registration process involves an examination of the trademark in comparison with previously registered trademark and publication which allows the public to challenge the unique validity of a mark.

Issues of trademark infringement are dictated by the concept of ‘confusing similarity’. For a mark to infringe on a given trademark, it must either in design or perception within the marketplace be difficult to distinguish from the original. The burden of responsibility for monitoring potential trademark infringement and remedying those situations falls to the registered trademark owner. Without a federal trademark, it should be noted that independent entities in different parts of the country may use identical or similar trademarks in local commerce without any legally contestable infringement upon each other. With federal registration, however, the owner of a trademark has grounds to ensure that it is not infringed upon throughout the United States by domestic products or imports.