Classifications and Origin of Trademarks

A trademark is a word, symbol, or phrase that is created to identify a manufacturer or seller’s products in order to distinguish their products from others.  For example “Nike” and the Nike “swoosh” symbol are trademarks, and they uniquely distinguish Nike shoes from other shoes.  Trademarks can encompass more than just words or symbols and can also include other aspects of a product that make it unique such as its particular color or packaging.  For example, the shape of a Coca-Cola bottle could be encompassed as part of the trademark and thus, it would be protected also.  According to case law, features of a product will not be protected if “they confer any sort of functional or competitive advantage.”  Qualitex Co. v. Jacobson Products Co., Inc., 115 S. Ct. 1300 (1995).

The sources of trademark law are state and federal law.  Originally, state common law was the main source of law for trademarks.  In the 1800s, U.S. Congress enacted the first federal trademark law; since then, federal trademark law has greatly expanded.  The primary federal statute is the Lanham Act, enacted in 1946 and amended in 1996.

Trademarks have to be unique and distinctive because the point of them is to identify the source of a particular good.  Trademarks can fall into four categories, depending on their relationship to the product.  Trademarks can be arbitrary or fanciful, suggestive, descriptive, or generic.  Each category has a different degree of legal protection, so it is important that people consider what category their trademark would fall within because that category will determine the level of protection that the trademark has.

An arbitrary or fanciful mark is a mark that has no logical relationship to the product that it represents.  Some examples of arbitrary or fanciful marks are “Apple,” “Exxon,” and “Kodak.”  The Nike “swoosh” could be considered an arbitrary or fanciful mark as well because it has no inherent relationship to athletic shoes.  Arbitrary or fanciful marks are particularly distinctive and as a result they are afforded a high degree of protection.

A suggestive mark does as its name indicates; it suggests or evokes characteristics of the good that it represents.  For example, “Coppertone” is suggestive of sun-tan lotion, although it does not specifically describe the lotion.  A suggestive mark is not unrelated to the underlying product.  Also, a suggestive mark is inherently distinctive, and therefore, it is given a high degree of protection.

A descriptive mark directly describes a characteristic or quality of the product such as its color, odor, function, or ingredients.  Some examples of descriptive marks include “Holiday Inn” and “Vision Center.”  These names clearly describe some aspect of the service i.e. hotel rooms and optical services. Descriptive marks are not particularly distinctive, and therefore, they are protected only if they have “secondary meaning.”  This is necessary because descriptive marks are terms that are useful for describing the product, thereby, giving the creator of the product an unfair advantage.  A descriptive mark gains a secondary meaning when the public that consumes the product associates that term or mark with the producer of the product rather than the product itself.  For example, “Vision Center” has secondary meaning because the consuming public associates that term with a specific provider of optical services and not with all optical services in general.

The final category of marks is the generic mark, which describes the general category to which the product belongs.  The term television is a generic term.  Generic marks are given no protection under trademark law because they are too useful for indentifying a product.  If a manufacturer were given control over a generic term, it would give them too great of a competitive advantage.

Those who are considering getting a trademark must consider these potential categories in which his or her trademark could be placed.  Each category has different degrees of protection under trademark law.


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