Trademarks differentiate products and services from competitors and enable consumers to reliably associate the quality of your goods and services with your brand.
All businesses and companies use names, logos, taglines, domain names, colors and more to identify and distinguish their goods and services. As a San Francisco trademark attorney, I believe that sound trademark protection and enforcement is essential to protect these valuable business assets.
Trademark Strength
Not all trademarks are created equally. Some are stronger than others, meaning they are entitled to greater legal protection. Distinctive marks are entitled to legal protection; however, may be distinguished on a scale of strong to weak as follows: Arbitrary, fanciful, suggestive and descriptive.
Generic marks are not eligible for trademark protection because they have become synonymous with a general class of product or service. Examples of marks which lost trademark significance through "genericization" include Escalator, Aspirin and Heroin.
Trademark owners are required to protect their marks from becoming generic by alerting the public to their trademark significance. Examples of widely recognized consumer products which have been subject to "genericization", but have maintained their trademark rights include "Photoshop" and "Xerox".
Fanciful and Arbitrary Trademarks
Fanciful and arbitrary marks are the strongest of trademarks. Fanciful trademarks are novel, original words, which have no connection to the product or service they represent. An example of a fanciful trademark is "Google".
Arbitrary trademarks are comprised of recognizable words, but they are not inherently connected to the related product or service. "Apple" is an example of an arbitrary trademark.
Business owners must carefully consider the pros and cons of selecting a business or product name. While fanciful or arbitrary trademarks are the strongest of trademarks, entitled to the strongest legal protection, it can be difficult for a new company using a fanciful or arbitrary mark to generate consumer association with their product or service due to a fanciful or arbitrary trademark's abstraction along with a new brand's relative anonymity in the commercial market.
Suggestive Trademark
A suggestive trademark implies the product or service it represents by the name alone. A suggestive mark differs from a merely descriptive trademark, because a suggestive mark requires a consumer to use some imagination to determine the nature of the product or service the mark represents. An example of a suggestive trademark is the name and associated logo of the men's publication "Playboy". The line between a descriptive and a suggestive trademark is not always clear-cut.
Descriptive Trademark
A descriptive trademark is one in which the word or mark literally describes the service or product. The product or service is immediately apparent in the mind of a consumer upon hearing or seeing the mark. No imagination is required whatsoever to make the determination as to what product or service the mark represents.
An example of a descriptive trademark is the optometry store and optical service facility, Vision Center. This type of mark receives little trademark protection. In fact, descriptive trademarks are only registrable on the Principal Register at the U.S. Trademark Office once the marks have achieved widespread consumer recognition, referred to as "secondary meaning". Secondary meaning is shown only by extensive advertising and evidence of consumer association between the mark and the product or service it represents.
Trademark Registration
Trademark rights in the United States are garnered by use of the mark. This differs from trademark law in other parts of the world, such as the EU, which has a system where trademark rights are secured only by registration of the mark, not use. In the U.S., registration of a trademark with the USPTO is not mandatory to secure trademark rights, but does provide important legal advantages.
The many benefits of federal trademark registration include: presumptive legal ownership of the mark, the right to use the ® symbol adjacent to the mark notifying the public of an existing federal registration, federal jurisdiction for trademark infringement claims and the right to recover lost profits, damages and costs as well as treble damages and attorneys' fees.
State trademark registration confers certain advantages as well. In California, as in other states, the Secretary of State's office maintains records of registered trademarks and will not allow others to register the same name. The mark, once registered with the state, appears on search reports and provides a deterrent to others considering the same or similar names.
Sources
United States Patent and Trademark Office -Trademarks
United States Trademark Office-Trademarks Basics
United States Trademark Office-Trademark Process
SF Bay Area trademark lawyer Matthew L. Kabak, principal attorney of the Kabak Law Group, provides full-service trademark representation and counsel to companies and individuals in all aspects of trademark protection, enforcement, transactions and related litigation. Mr. Kabak has been serving San Francisco, Oakland and Silicon Valley start ups and established companies since 2001.
