A trademark is a word, symbol, or phrase, or any combination thereof used to identify a particular manufacturer or seller’s products and distinguish them from the products of another. 15 USC § 1127. A popular example is the Nike “Swoosh” design, which distinguishes Nike from other brands such as Adidas and New Balance. Trademark protection can even extend beyond what 15 USC § 1127 proscribes including other characteristics of a product, such as color or the product’s packaging. The unique shape of a Coca-Cola bottle is one illustration. http://cyberlaw.harvard.edu/metaschool/fisher/domain/tm.htm.
In order to qualify as a trademark, a mark must be distinctive—that is, it must be capable of identifying the source of a particular good. Courts categorize trademarks into four groups when determining whether a mark is distinctive: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. Id. Arbitrary or fanciful trademarks are coined terms that possessed no meaning before the trademark like STARBUCKS or EXXON. Suggestive trademarks indirectly reference the quality of the product like JAGUAR. Descriptive trademarks describe the products they market like PEARL VISION. Generic trademarks describe the whole class of goods like PERSONAL COMPUTER. www.registeringatrade.com.
Although registering a trademark is not required for a trademark to be protected, registration gives the creator a variety of advantages. Registration with the United States Patent and Trademark Office (“USPTO”) confers the right to use the trademark nationwide to the registering party. In addition, registration allows the creator to bring an infringement suit in federal court. A potential for trademark infringement occurs when the holder of one trademark claims that another is using a similar mark. In order for a claim to be successful, the holder must prove that the defendant is using a similar mark in a way that creates the likelihood of confusion and gives the defendant an advantage over the trademark holder. A holder has the potential to recover damages, attorney fees, and other remedies for trademark infringement.
Trademark rights are granted to the first to use the trademark or the first to file a trademark application (registering the trademark). In order to ensure that a creator is first, an extensive search of pertinent databases is required to confirm that the potential trademark is not already in use and that there are no conflicts These databases include the Federal Trademark Database, the trademark databases of all fifty states, and internet databases such as Google. Once it is established that there are no conflicts with the potential trademark, an application must be filed with the USPTO. It usually takes four to six months for the USPTO to respond to an application and it is usually over one year before the registration is granted. Id.
Due to the extensiveness of trademark databases and the amount of time that elapses between submitting an application to the USPTO and the actual grant of the registration, registering a trademark can be overwhelming. In addition, trademark infringement cases are more prevalent with the growing advancements in technology. Luckily, a lawyer can help. Trademark law focuses on assisting consumers in deciphering among competing products and most importantly, protecting the creator’s investment by guaranteeing the producer will reap the financial and reputation award derived from the desirable product. Qualitex Co. v. Jacobson products Co,115 S.Ct. 1300 (1995).
Corby Bell of Dorman Bell is a licensed patent attorney who can provide you the assistance needed to effectively search and register your trademark. For more information, call us at (214) 736-718 or visit our contact page and we will get back with you as soon as possible. Our extensive background and experience will benefit you and we look forward to serving you!