United States: Establishing Trademark Rights

Last Updated: December 19 2014
Practice Guide by Brinks Gilson & Lione

1. Choosing a Mark. It is important to select a trademark that identifies and distinguishes a product or service from others in the marketplace. So-called “strong marks” are preferred over “weak marks.” The relative strength of a mark under the law is determined by its relative uniqueness. The law divides marks into four categories: generic, merely descriptive, suggestive, and arbitrary.

  1. Generic Marks. The law will not help a company protect a mark that is considered generic. For example, the marks “super glue” for glue and “shredded wheat” for cereal have been determined to be generic.
  1. Descriptive Marks. A mark is considered merely descriptive when it directly describes a product or one or more of its important characteristics. Generally, the law will not help to protect a mark that is merely descriptive except where the mark becomes well recognized in the marketplace as being the trademark of the company that uses it, typically through long, continuous, and exclusive use. For example, the mark RAISIN BRAN is a descriptive mark for cereal, but has become well recognized. Normally the law considers such marks to be weak marks. A descriptive mark such as DRY KLEAN for a dry-cleaning agent may make it easier to educate consumers through advertising about the nature of the product bearing the mark, but it may be difficult and even impossible to stop later unauthorized users from using the mark. Worse yet, a highly descriptive mark for a popular product may become a generic term for that product, making it available for everyone’s use.
  1. Suggestive Marks. A mark is considered to be suggestive when it hints at the nature or a desirable quality of a product, without actually describing it. For example, OASIS has a cool and refreshing connotation, thus making it a rather good mark for office water coolers. The mark is suggestive, since it does not actually describe the product.
  1. Arbitrary Marks. A mark is considered to be arbitrary when it is a made up word or symbol with no specific meaning, such as EXXON or XEROX, or when it is a word or symbol with a dictionary meaning unrelated to the product, such as ADVENT for stereo speakers. From a legal point of view, arbitrary marks are the strongest and the easiest to protect and enforce against later unauthorized users, as long as they are not used by others in a way that could create confusion.

2. Trademark Searches. Once a mark is selected, a trademark search should be conducted to determine if others are using the same or a similar mark. Online searches can be made via the USPTO website (www.uspto.gov), while more thorough searches are available through various trademark firms that examine a large body of information, including USPTO data, local telephone books around the country, trade journals, Internet domain names, etc. Once the results of a search are obtained, a determination can be made as to whether the proposed mark would present a likelihood of confusion in view of existing trademark uses.

3. Rights of a Mark. In general, trademark rights begin with actual use of the mark in commerce. Under common law principles (i.e. the law as developed by court case precedent), the first user of a mark is provided with priority with respect to his or her goods or services in his or her geographic areas of actual use and the zone of natural expansion of the mark’s use, even with respect to a business that later obtains a federal registration for the same or a similar trademark. Rights also can be based on constructive use, i.e., legally implied use, as part of the registration process described in Section D below.

4. Proper Use of a Trademark. Proper use of a trademark is important to ensure that it remains enforceable and does not become generic. One of the simple rules is to distinguish trademarks from surrounding text by capitalizing the initial letter or all letters. For example, the TOYOTA trademarks can be distinguished from surrounding text using bold or italic fonts or by placing the trademark within quotation marks or in a stylized form or logo type that has become associated with the mark. Never use a trademark as a noun, but instead use it as an adjective to modify a noun. A good test for proper use of a trademark is to remove the trademark from the sentence or text; if the sentence still makes sense, then the use is proper. For example, referring to a FRIGIDAIRE refrigerator constitutes proper use, versus referring simply to a FRIGIDAIRE , which constitutes improper use.

5. Notice. Proper notice should be provided to the public that a mark is regarded as a trademark. Before a federal registration is obtained, a “™” or “℠” designation can be used to indicate a claim of rights as a trademark or a service mark, respectively. These designations indicate that the user regards the mark as its own mark. Once a federal registration is obtained, the appropriate designation can be used to signify the registration, e.g., “registered” or the designation “®”.

To find out more please access our IP Primer page.

This document is not intended to create an attorney-client relationship. You should not act or rely on any information in this document without first seeking legal advice. This material is intended for general information purposes only and does not constitute legal advice. If you have any specific questions on any legal matter, you should consult a professional legal services provider.

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Useful Resources
The IP primer provides an overview of the complexities of IP law, is an excellent resource for both new and experienced professionals and available in a number of languages.
A collection of recent and significant publications by the Experts at BGL.
USPTO is the federal agency for granting U.S. patents and registering trademarks.
Administers the U.S. copyright law and advises Congress and other government agencies regarding copyright issues.
WIPO is the global forum for intellectual property services, policy, information and cooperation.
INTA is a global association of trademark owners and professionals.
The Intellectual Property Owners Association is a trade association for owners of patents, trademarks, copyrights and trade secrets.
The AILPA is an innovator, powerful advocate, and visible global leader in intellectual property.
AIPPI is an international organization comprised of business firms, executives, lawyers, educators, patent and trademark agents, intellectual property owners, and other persons interested in the worldwide protection of patents, designs, trademarks, trade names, know how, goodwill, copyright, and other intellectual property rights and the elimination of unfair trade practices.
BIO is the world's largest trade association representing biotechnology companies, academic institutions, state biotechnology centers and related organizations across the United States and in more than 30 other nations.
Supports innovation, competitiveness and economic growth across Europe through a commitment to high quality and efficient services delivered under the European Patent Convention.
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