The term trademark (which is usually used for reference to any mark including service marks) is used to refer to a broad category of names, logos, or other symbols (colors, shapes, and musical sequences like Microsoft’s “Start Windows” sound can also be registered) to identify goods or services in the marketplace. Generally, trademark ownership is determined by who uses the mark first in a commercial setting. However, trademark registration officially establishes your ownership of the mark, and provides important benefits that make it a lot easier to prove infringement, win a lawsuit against unauthorized users of the mark, and collect damages.
For a mark to have sufficient legal strength to provide one with exclusive rights as part of a comprehensive IP strategy, it must possess several features. First, it may not be a generic term that is used in connection with the underlying products or services. For example, the term “ice cream sandwich” cannot be a trademark for ice cream, but is a protectable name for a computer operating system. However, note that a mark which includes generic terms may be protected as a trademark in which the generic part is disclaimed, such as “VegiStock Grocery,” for a grocery business, where the owner has disclaimed the word “grocery” from the mark’s protection, which means that others may use this term in other combinations.
The trademark must be a distinctive name in the context of the products and services. It can be a clever term or combination of terms, such as “pea in a pod” for a maternity store, a word(s) used arbitrarily in the field, such as “Apple” for computers, or a unique name with no particular meaning such as “Exxon,” the latter being the strongest. Furthermore, it is important that the mark is not too close to another mark that can create confusion to the consumer, such as “Nikee” for shoes, which cannot be protected as a trademark, as it is too similar to “Nike.” Creating a distinct mark requires a bit of creativity combined with marketing savvy and a sharp sense of trademark law. Intellectual property firms specialize in assessing the strengths and weaknesses of these issues for a desired mark.
In terms of longevity, trademarks differ from patents and copyrights which have a limited (non-extendable) life. After the expiration of their term, patents and copyrights become available to the public. In contrast, as long as the required fees are timely paid, trademarks may last indefinitely – making them an attractive component in a long-term IP strategy. The exception to the rule is the case of marks that have become generic over time (called “genericide”), such as Kleenex, which started as a brand name for tissues, and is now used generically as a replacement for the word tissue (no matter which brand one is referring to). In such (not so common) cases, the trademark loses most, if not all, of its protection.
Usually, a trademark owner will invest time and resources to build a brand, advertise, and integrate it into related products and services. Associated costs will also involve obtaining and maintaining trademark rights. The privileges enjoyed by owning a trademark include exclusive official rights which can avert illegal use of the mark by others, thus protecting the invested value in the brand and creating sustainable brand equity.
Trademarks signal identifying information about the goods or services to the consumer. They also create an incentive for producers (or service providers) to maintain the quality of the goods (or services) at a level that would reflect positively on the brand image. In turn, consumers often identify themselves or their lifestyles with the marks they use in order to convey a desired socioeconomic status. That is why many are willing to pay a higher price for products with a “brand name,” not merely for a better quality product or more secure support services, but also (sometimes mainly) in order to show to their peers that they belong to an elite and respected economic class.
Branding, protected by trademarks, also simplifies the search by the consumer for a specific product. For instance, by looking for a familiar logo, rather than perusing lists of features of a specific item, one can quickly identify the source of the manufacturing – the so-called “signaling” function of trademarks. Without trademark laws, similar goods produced by different manufacturers, with various levels of quality, could all be sold under the very same name and logo. The buyer, in turn, would face a great deal of confusion, as it would be extremely difficult to differentiate between the items, and to assess the quality one is receiving for the listed price.
FlashPoint IP, a leader among intellectual property firms, provides all types of professional trademark searches for registered and unregistered marks worldwide, as well as national and international trademark registration. We assist in the candidate selection process of brand names to maximize IP value and protection. Contact us to discuss your options regarding IP strategy and positioning, and to find out more about FPIP trademark filings. On Your Mark, Get Clearance, Go!