United States: Trademark Basics And Trademark Use

Last Updated: September 30 2019
Article by Mark E. Miller and Scott W. Pink

What is a Trademark?

Legally, under United States law, a trademark (or service mark) is defined as any word, name, symbol, or device, or any combination thereof, which identifies and distinguishes the goods (or services) provided in conjunction with the mark from the goods (or services) of others. A mark also indicates the source of goods (or services), even if the source is unknown to consumers.

Grammatically, a mark is a proper adjective (for example, Rolex) which modifies the generic product name (a noun) (for example, wristwatch). A mark is not a noun—it is not the generic name of the product or of the service. A mark must not be used in a plural or possessive form, which would indicate improper use as a noun. A proper adjective, like a proper noun, is entitled to an initial capital letter. For example, "Rolex brand wristwatch" is proper trademark use, while "a Rolex" or "Rolexes" used without a generic term are not. Similarly, a mark is not a verb. For example, asking someone to "Instagram" a picture is improper use, while asking someone "to edit or post a photo through the INSTAGRAM app" is proper trademark use.

Functionally, a mark identifies a particular brand of a product or service and tells a consumer something about a product or service. For example, the mark Rolex used in conjunction with wristwatches tells a consumer about the expected quality of the product and the source of the product. A mark also allows consumers to quickly differentiate similar competing products. For example, a consumer facing the ice cream selections below would be able to immediately select the product of the source and quality that the consumer desires:

Categories of Trademarks and Service Marks

Fanciful (Coined) and Arbitrary Marks. Fanciful marks are "made up;" examples include KODAK, XEROX, and EXXON. An arbitrary mark is created when a common word is applied to a product or service unrelated to the meaning of the word; examples include NIKE (for sneakers), TIDE (for detergent), and PINCH (for scotch). Fanciful and arbitrary marks are the strongest marks.

Suggestive Marks. Suggestive marks act in the manner for which they are named—they suggest some characteristic of the associated goods or services, but require a consumer to use imagination to draw a conclusion about that characteristic. Examples of suggestive marks include SUNKIST for oranges and orange juice, PLAX for plaque removing dental rinse, WORD for word processing software, and COPPERTONE for suntan oil. Suggestive marks are strong marks, although typically not as strong as fanciful and arbitrary marks.

Descriptive Marks. A mark is descriptive if it describes any characteristic of the associated goods or services. Generally, descriptive marks cannot be protected unless the owner or user of the mark can prove that the mark has acquired distinctiveness—meaning that consumers associate the mark with the owner (as the source of the goods or services). Examples of descriptive marks that have acquired distinctiveness include MR. PEANUT peanuts, PARK-N-FLY airport parking, and COKE ZERO soft drinks. Descriptive marks are the weakest marks and may be difficult to protect.

Generic Terms. Terms that describe a category of product or service rather than a certain brand of product or service are generic terms. Generic terms can never acquire trademark significance and cannot be protected or infringed. Examples of generic terms are "microprocessor," "ice cream," and "shoes." Marks that have lost trademark significance, no longer serving as an indicator of source or quality, become generic terms. Aspirin, escalator, cellophane, and videotape are former trademarks that lost trademark significance and became generic terms.

Obtaining Rights in a Mark

Rights in a trademark or a service mark are obtained by using the mark in commerce. Using a trademark "in commerce" means selling or transporting goods that have the trademark affixed to the goods or the packaging for the goods. Using a service mark "in commerce" means advertising or promoting services using the service mark, provided that the services have actually been rendered. Rights arising from use of a mark are known as common law trademark rights and are enforceable under both federal and state law. A federal trademark registration confirms trademark rights and provides favorable legal presumptions and additional legal recourse for enforcing those rights. A federal registration is not, however, a prerequisite to ownership of protectable and enforceable trademark rights.

The Value of Trademark Rights

In summary, the value of obtaining rights in a trademark or service mark lies in two areas: (a) the right to use a trademark to identify the source of goods or services (i.e. developing brand recognition and goodwill); and (b) the right to prevent others from using the same or a similar trademark in conjunction with the same or similar goods or services (i.e. protecting brand recognition and goodwill by eliminating confusion). The ultimate value of a mark is to enhance sales of the goods or services advertised, marketed, or sold with the mark through brand recognition and the expected quality of the good or service.

Is a Domain Name a Trademark?

A domain name is part of a Uniform Resource Locator (URL), which is the address of a site or document on the Internet. In general, a domain name is composed of a second-level domain, a "dot," and a top-level domain (TLD). The wording to the left of the "dot" is the second-level domain, and the wording to the right of the "dot" is the TLD. For example, in the domain name www.xyz.com, the term "xyz" is the second-level domain and the term "com" is the TLD.

Generic TLDs are designated for use by the public. Unrestricted generic TLDs, available to any individual or entity, include COM, NET, and ORG. Restricted generic TLDs include EDU for degree-granting colleges/universities, GOV for federal government entities, INT for international organizations, and MIL for U.S. military organizations.

Traditionally, neither the beginning of the URL (http://www.) nor the TLD had any sourceindicating significance. Those designations are devices that every Internet site provider must use as part of its URL. In 2011, however, the Internet Corporation for Assigned Names and Numbers (ICANN) launched a program to introduce new TLDs. The introduction of new TLDs made it possible for a TLD to have source-indicating significance. For example, if the wording after the dot is already used as a trademark or service mark the appearance of such marks as a TLD may not negate the consumer perception of them as source indicators. Nevertheless, it is the secondlevel domain that must be primarily examined when protecting or enforcing a trademark or service mark.

A mark composed of a domain name may be registered as a trademark or service mark only if it functions as a source identifier. The mark must be perceived by potential purchasers as indicating source and not merely as an informational indication of the domain name address used to access a website. A term that only identifies the applicant's domain name or the location on the Internet where the applicant's website appears, and does not separately identify applicant's products or services, does not function as a trademark or service mark. Instances of a domain name used only as an Internet address include a domain name used in close proximity to language referring to the domain name as an address or a domain name displayed merely as part of the information on how to contact the applicant. For example, using the URL www.xyz.com in an advertisement that states "visit us on the web at www.xyz.com," does not constitute use of the URL as a trademark or service mark. Similarly, listing the URL www.xyz.com on a business card below information such as a telephone and fax number would not constitute use as a trademark or service mark.

What is Trade Dress?

Trade dress refers to the non-functional physical detail and design of a product or its packaging or to the décor or atmosphere of a business. Trade dress must serve as a source identifier and distinguish a product or service from third-party products or services. Trade dress refers to the total image and overall appearance of a product or its packaging, including features such as size, shape, color, texture, or graphics, or to the décor, signage, menu, and general "atmosphere" of a restaurant or store. When assessing trade dress or considering whether a third-party product design, packaging, or décor infringes a trade dress, the elements of the trade dress (i.e. the features of its appearance) must be viewed together, rather than separately.

Trade dress rights only arise if a product design or packaging or the business décor is (1) nonfunctional and (2) distinctive (i.e. serves as a source identifier) rather than generic. Although product packaging can be inherently distinctive (and capable of trade dress protection), the design of a product can never be inherently distinctive. A product design (or non-inherently distinctive product packaging) is only protectable if the owner can prove that the design (or packaging) has acquired distinctiveness (i.e. serves as the source of the goods).

As with trademarks and service marks, trade dress rights arise from use and are known as common law trade dress rights. Those rights are enforceable under both federal and state law. It is also possible, as with a trademark or service mark, to obtain a federal registration confirming trade dress rights. The process for registering a trade dress is slightly more rigorous than for a trademark because—in addition to other requirements—the applicant is required to demonstrate that the trade dress is nonfunctional and is either inherently distinctive or has acquired distinctiveness. Examples of registered trade dress include Maker's Mark's red dripping wax seal on its whisky bottles, the Coca-Cola soft drink bottle, and Chipotle restaurants' neo-industrial feel established through the use of unpainted galvanized or stainless steel.

Download >> Trademark Basics And Trademark Use

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Cowan Liebowitz & Latman PC
 
In association with
Practice Guides
by Mondaq Advice Centers
Relevancy Powered by MondaqAI
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Cowan Liebowitz & Latman PC
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions