If you are thinking of running your own business, then researching trademarks is essential. If you think you’ve chosen the perfect name for your business, have you made sure that someone else doesn’t already own the trademark on that name? Looking at the state business register is not enough–and the last thing you want when you get your business started is for someone to tell you that you must change your name or get sued. Below is some basic information about trademarks.
Trademarks are used to indicate the source of a good or service. They may be comprised of colors, scents, or sounds. They may also include things like the shape of a bottle or design of a container. Often, people will combine a variety of elements for their business, which may be referred to as Trade Dress.
The Lanham Act is the federal statute that governs trademarks and its primary purpose is to help avoid confusion in the marketplace. Keep in mind that a trademark may be obtained without registering, but registering offers greater protections as a mark is presumed valid if registered. Unregistered marks are also geographically restrained to the area of their business, whereas registered marks have nationwide rights, regardless of whether business is conducted nationwide.
Someone that is claiming a non-registered trademark will often use the symbol (™), or (SM) for service marks, while those that have registered normally use (®). Trademarks last in perpetuity as long as the mark is being used. All trademarks are based on actual use of the mark in commerce.
However, it is important to keep in mind that not every slogan, logo, graphic, etc. may be trademarked, as there are several restrictions. Trademarks are divided into 4 categories:
- Generic (cannot be trademarked). Example: Carpentry Tools
- Descriptive (cannot be trademarked unless it has attained secondary meaning). Example: Durable Tools.
- Suggestive (trademarkable). Example: Sugar & Spice in connection with baked goods.
- Arbitrary or Fanciful (trademarkable). Example: Exxon in connection with petroleum products, or Apple in connection with computers.
In order to determine what category your mark falls under, we use the Primary Significance Test: what does the term signify in the minds of the consumer? For example, a mark is generic when the majority of the buying public associates the mark with a product, rather than the source of the product.
Last names (surnames) are also on the list of marks that cannot be trademarked unless they obtain secondary meaning. So what is secondary meaning? This occurs when the buying public associates the name with a source of goods, rather than as a last name. For example, Ford is a last name, and would therefore generally not be trademarkable. However, Ford has obtained a secondary meaning, as no doubt most people in the world associate it with the car manufacturer. But because secondary meaning is difficult to achieve, most surnames are exempt from the register.
Concurrent registration of two similar marks in different product markets is permitted when consumer confusion is unlikely.
Deceptive marks can never be registered.
Don’t hesitate to contact us regarding your mark.