What is a trademark?

A Trademark indicates the source of a product or service. Common examples include the names of product or services (Coca Cola, Kodak), slogans that are associated with products or services (Fly the Friendly Skies), and logos or designs. It may also be possible to claim trademark rights in distinctive colors (the color pink for Owens Corning insulation), distinctive phone numbers, distinctive music (the NBC chime), etc.

How can one lose rights to a trademark?

One can lose rights to a trademark if a mark that was once distinctive becomes the common generic name for a product or service. This may occur when a trademark owner does not properly police the use of his or her mark. In one example, the word "escalator" was once a trademark for a brand of moving stairs, but because of improper policing of the mark it has become generic.

The name of a product or service should always be capitalized. It should always be used in conjunction with the common generic name of the goods or service as in "Ford motor car" or "XYZ brand of toilet tissue". Never use a trademark as a verb; it is improper to "Xerox a document" - instead, one photocopies a document using a Xerox brand copy machine.

Distinctiveness of Marks

Under trademark law, a mark must be distinctive (i.e. capable of distinguishing the product or service from others.) Thus, trademarks are classified according to their level of distinctiveness and are afforded protection according to their classification.

Arbitrary or fanciful marks. The most distinctive marks are those which are arbitrary or fanciful. Arbitrary marks are those which have no relation to the goods (e.g. Apple for computers) and fanciful marks are coined or invented names (e.g. Kodak film). As long as they are not confusingly similar to other marks, arbitrary or fanciful marks are afforded the highest level of protection.

Generic marks. On the opposite end of the spectrum of distinctiveness lie generic marks - the common name for the product or service. Generic marks are incapable of protection under trademark law because others need to use the common name to compete effective. Thus, one cannot claim trademark rights in the word ‘desk’ to identify the supplier of a desk.

Descriptive marks. Between arbitrary/fanciful marks on one end of the distinctiveness spectrum and generic marks on the other end lie descriptive marks. These are marks which describe an attribute, function or use, characteristic, purpose or quality of the goods or services. Descriptive marks are only eligible for trademark protection if they acquire secondary meaning (consumer recognition of the term as a trademark.)

Federal Registration of Trademarks

Although protection is available for trademarks is available under state law, a higher degree of protection is afforded through registration of the mark in the U.S. Patent and Trademark Office.

Federal registration allows the owner of the mark to display the familiar ® symbol thereby putting others on notice of trademark rights.

Trademark rights are no longer restricted to state boundaries; a first user of a federally registered mark is entitled to nationwide protection.

Federal registration grants the trademark owner access to federal court. In causes of action for trademark infringement of federally registered marks, profits, damages, and costs of the law suit are recoverable and triple damages and attorney’s fees are available.

A federal registration may be grounds for stopping importation of goods bearing an infringing mark.

Mr. Kirshner is a licensed attorney in New Jersey and New York and is licensed to practice before the United States District Court for the District of New Jersey.

Mr. Kirshner earned a Master of Intellectual Property from the Franklin Pierce Law Center.

Mr. Kirshner has extensive experience performing trademark searches and obtaining trademark registrations at the U.S. Patent and Trademark Office.