Protecting Your Business and Its Brand Identifiers through Trademarks & Trade Dress

A trademark and/or trade dress is/are often the first-impression that consumers and potential customers encounter when seeking your product or service. Protect the goodwill and valuable impression of your product or service by registering the trademark with the U.S. Patent and Trademark Office. Please review the following FAQs to answer basic questions about trademarks in the United States.

What is a trademark and what is trade dress?

A trademark is any letter or number, word or phrase, symbol, image, design, photo, device, sound, or even smell that distinguishes similar goods and/or services. Usually, trademarks are referred to as "brand names" and include such examples as "APPLE" (Computers) or "SAMSUNG" (Telephones) as well as graphic designs of such words or logos.

Trade dress is a species of trademark, and protects the non-functional aspects of product packaging or presentation, including such examples as the bottle-shape used by "Coca-Cola" for its classic "Coke" beverage, the pink-color of Owens-Corning fiber-glass insulation, or the front-grill aesthetic of "JEEP" vehicles.

In terms of grammar, many lay-people misuse trademarks as nouns or verbs, when trademarks are actually modifiers or adjectives. For example, it is common for someone to instruct another to "Google it" to find an answer on the web or "Xerox [it]" when needing to photocopy a document. However, the appropriate instruction is for the other person to do a "Google search" or to make a "Xerox copy" of the document.

What is the function of a trademark?

A trademark is a source identifier. In other words, a trademark identifies an associated good or service as originating from a particular source (even if broadly unknown) that is distinguishable from other source identifiers (marks) in the marketplace.

One policy reason for protecting trademarks is rooted in consumer protection and attempts to reduce and/or eliminate consumer confusion in the marketplace. Thus, trademark protection provides benefits to the consumer and the trademark owner. An equally significant policy reason for such protection accounts for the investment that businesses make into developing and maintaining such marks and the promotional expenditures often necessary to make such distinctions clear to consumers.

How should someone select a trademark?

There is not a single right-way to choose a trademark for your good or service. However, there are several considerations that should be weighed during the selection and/or development process.

For instance, under the law, a word (or design) may be labeled anywhere along a spectrum of "strong" to "generic" and all points in between. In trademark doctrine, there are five general categories of terms (designs) (from strongest protection to no protection):

Fanciful. A fanciful mark is a coined or invented term. Examples include Exxon, Kodak, Xerox, and Polaroid. Because fanciful marks are coined, and do not take a word/words from the language, fanciful marks are accorded the strongest protection and labeled as "strong" marks.

Arbitrary. An arbitrary mark is a term that has no connection to the product or service. Examples include two types of "Apples" - Apple Computers and Apple Records. The word "apple" has no connection to either computers or records. Although arbitrary marks are using actual words, because there is no general connection between the mark and the product or service, the words are being used out of the general context that ordinary people use such words, and are therefore accorded strong protection.

Suggestive. A suggstive mark is a term that suggests something (a quality or characteristic) about a product or service without describing the product directly. Examples include: "Dairy Queen" for products related to dairy but not specifically describing ice cream; "Microsoft" for products and services related to software but not specifically describing software used in personal computing utilizing microprocessors. Suggestive marks are generally afforded strong protection.

Descriptive. A descriptive mark is a term that describes something (quality or characteristic) about a product or service, and includes geographical terms and personal names (esp. surnames). Because descriptive marks are very close to describing the product or service as a category, such marks are usually not inherently distinctive and therefore not accorded much initial protection. Rather, such marks must acquire distinctiveness (or "secondary meaning") through continuous and systematic use over time. Only descriptive marks that have acquired distinctiveness (or secondary meaning) are afforded protection, and even then the protection is limited. The marketing expenditures required to obtain "acquired distinctiveness" (or secondary meaning) is often significant and time-consuming. Thus, if practicable, it is often better to focus on a term(s) that fit one of the other three "strong" categories (fanciful, arbitrary, or suggestive).

Generic. Usually, a generic term is a word or phrase that defines a product or service. Examples of such terms include: automobile; car; truck; vehicle; soap; and telephone (among many others). Many generic terms were formerly protected marks, but because of misuse by the public and/or a failure to police such misuse(s), the term(s) has come to represent a category of goods or services. Examples include: aspirin; escalator; linoleum; elevator; and raisin bran.

How does a business obtain trademark rights?

Although there are many misconceptions about trademark registrations (at the state and/or federal levels), trademark rights arise through adoption and continuous usage. Registration is not required for a business or party to assert trademark infringement against another. Thus, a party does not have to formally seek registration to possess rights under trademark law. Such marks are referred to as "unregistered marks" and typically utilize the "TM" or "SM" abbreviation(s) (representing "trademark" or "service mark").

On the other hand, trademark registration is an advisable course of action (for several reasons addressed below), including the ability to switch from "TM" to the ® (circle-R) symbol.

For federal registration, an applicant files a trademark registration request and provides a filing fee and a sample of the mark in use. The application is assigned to a trademark attorney employed by the USPTO for examination. If the mark is ultimately accepted for registration, the mark is assigned a registration number and a certificate of registration is provided as proof of registration. The registration is renewable every 10-years, but is subject to affidavits of continued use every five-years (failure to provide affidavits of use results in administrative cancellation of the mark).

What benefits are obtained with a federal registration?

There are many, but the main benefits and advantages include:

  • ability to use the ® symbol as public notice of registration
  • legal presumption of ownership
  • ability to use customs to stop counterfeit goods
  • ability to seek foreign registration
  • ability to sue in federal court

To learn more about Trademarks, contact York Law LLC at 740.414.3975 or