Types and Characteristics of Trademarks
Trademarks protect brand identity and help consumers tell one company's products from another's. The Lanham Act provides the federal legal framework for trademark protection in the United States, and the United States Patent and Trademark Office (USPTO) handles registration. Understanding what qualifies for trademark protection starts with one core principle: the more distinctive a mark is, the stronger its protection.
Trademark law organizes marks into a spectrum of distinctiveness, from strongest to weakest:
The Distinctiveness Spectrum
- Fanciful marks are invented words that have no meaning outside their use as a trademark (Exxon, Kodak, Xerox). Because they exist solely to identify a brand, they receive the strongest level of protection.
- Arbitrary marks are real words used in a context completely unrelated to their ordinary meaning (Apple for computers, Camel for cigarettes). They receive strong protection because the word has no logical connection to the product.
- Suggestive marks hint at a quality or characteristic of the product without directly describing it (Coppertone for sunscreen, Greyhound for bus services). These receive moderate protection because a consumer needs some imagination to connect the mark to the product.
- Descriptive marks directly describe a feature, quality, or characteristic of the product (Best Buy for retail stores, American Airlines for air transportation). These receive the weakest protection and cannot be registered unless they have acquired secondary meaning, which means consumers have come to associate the term with a specific source through extensive use and advertising.
Below descriptive marks sit generic terms, which cannot be trademarked at all. A generic term simply names the category of product itself. "Aspirin" and "escalator" were once protected trademarks that became generic through widespread public use as common nouns.
Non-Traditional Trademarks
Trademarks aren't limited to words and phrases. Visual elements, sounds, and even scents can function as trademarks if they identify the source of a product.
Symbols, Designs, and Trade Dress
Distinctive logos, emblems, or graphical designs can serve as trademarks. The Nike swoosh, McDonald's golden arches, and Starbucks' siren logo all function this way. Like word marks, these must be either inherently distinctive or acquire secondary meaning through extensive use.
Trade dress refers to the overall visual appearance of a product or its packaging that signals to consumers where the product comes from. This can include combinations of color, shape, texture, and graphics. Examples include Coca-Cola's contour bottle, Tiffany & Co.'s robin-egg blue box, and Apple's retail store layout. Trade dress must also be either inherently distinctive or have acquired secondary meaning, and it cannot protect features that are functional (more on that below).
What Can and Cannot Be Trademarked
Trademarkable elements:
- Distinctive words and phrases that identify the source of goods or services
- Numbers used in a distinctive manner, not merely as a model or grade designation
- Distinctive sounds that identify a source (NBC's three-note chimes, MGM's lion roar)
- Non-functional scents that identify a source (a floral scent applied to yarn, for example)
Non-trademarkable elements:
- Generic terms that simply name the type of product or service
- Descriptive terms that have not acquired secondary meaning
- Functional features essential to the use or purpose of a product (the shape of a wrench, the color of a pill indicating dosage). The functionality doctrine prevents trademark law from doing the job of patent law by blocking competitors from using features they need to compete.
- Scents that serve a functional purpose (the scent of a perfume or air freshener is the product, so it can't also be a trademark for it)
- Commonly used sounds in an industry that lack distinctiveness
Trademark Protection and Registration
Legal Framework
Federal trademark registration through the USPTO is not required to have trademark rights, but it provides significant advantages:
- Nationwide priority and exclusive rights to use the mark in connection with the registered goods or services
- Public notice of ownership through the USPTO database, which puts others on notice of your claim
- The legal right to use the ® symbol, signaling federal registration
- Stronger footing in infringement lawsuits, including access to federal courts
Key Concepts
Source identification is the fundamental purpose of a trademark. A mark must help consumers identify who makes or provides a product or service.
Consumer perception drives much of trademark analysis. Whether a mark is distinctive, whether it has acquired secondary meaning, and whether infringement has occurred all depend on how the relevant consuming public understands the mark.
Trademark infringement occurs when someone uses a mark (or a confusingly similar one) without authorization in a way that creates a likelihood of confusion among consumers about the source of the goods or services. Courts evaluate multiple factors to determine likelihood of confusion, including how similar the marks are, how related the products are, and evidence of actual consumer confusion.