Join Dana Robinson for an in-depth discussion in this video What is a trademark?, part of Understanding Trademarks: A Deeper Dive.
- A trademark is something that is capable of distinguishing someone as the source of goods or services. The thing we call a trademark can be a word or words, it can be a logo, it could be a slogan, it could be a jingle, it can be a color, it can be a unique type of packaging. If any of these things is capable of distinguishing a business as the one who sells a product or service, then it can give rise to trademark rights. We often call trademarks, marks.
The word trademark is often used to refer to a mark on goods. While the word service mark is often used to refer to a mark on services, but they're all marks. There's no real legal distinction between trademarks and service marks. Trademark rights arise from use of a mark in the United States. In most countries rights arise from registration, however, in the United States rights arise from use. If you use a mark you create trademark rights.
Registration, which I'll discuss later, confers additional protection and expands your rights, but the underlying rights are always tied to your actual use of the mark as a brand to sell products or services. Let's talk about trademarks as opposed to other types of intellectual property. A trademark is different from copyrights and patents. Copyright law protects original works of authorship, such as books, sculptures, songs, artwork, photography, and video. Patent law protects ideas that are useful and novel.
Patents would protect a device, a pharmaceutical, a method, and other useful things. It's easy to get these three types of intellectual property mixed up. Think of a trademark as the brand, think of a copyright as protecting works of authorship, and think of patents as protecting useful inventions. Remember, a trademark is something capable of distinction. It identifies you as the source of a good or service. To do that it must be distinctive.
The more distinctive the trademark, the more protection it receives. What does it mean for a mark to be distinctive? Well, a generic word can't be distinctive. The thing you use as a mark must be capable of distinguishing you from others who sell the same product. Some words will be totally non-distinctive, while other words will be very distinctive, but most of the marks fall on a spectrum. How distinctive a trademark is will determine how protectable it is.
A highly distinctive mark is more protectable than a less distinctive mark. It's important to figure out where a mark is on the spectrum. I have a way of visually demonstrating what I mean by a spectrum of protectability from weak to strong. Based on this graphic you can see that a word that is used to identify a product or service is generic and un-protectable. Diamond would be generic for diamonds, but it would be suggestive for glass cleaner, and arbitrary for an apparel brand.
Generic words are not protectable ever. Other words are not generic, but might describe the product or service. Descriptive words are not very distinctive, but if they are used over time they can become distinctive. Descriptive words are not protectable in the beginning. You can certainly call your company something descriptive, but you just won't be able to protect it unless it eventually becomes distinctive of you. For example, the term American Airlines might be said to be descriptive of an airline in America, but we all know that it refers to the brand name of one particular airline.
It is now distinctive of American Airlines. Thus, we generally do not give protection to descriptive marks in the beginning. Yes, you can use a descriptive name, but you will probably not be able to protect it or register it until you have used it exclusively for a long period of time such that it becomes distinctive of you. Other words are suggestive. A suggestive term is one that does not describe the specific product or service, but brings the idea to mind if you use a little imagination. Moving along the spectrum of distinction you can see that arbitrary words are more distinctive than suggestive ones.
These are words that are a part of the English language, but are not suggestive. They are arbitrarily used, such as Apple for computers. It's arbitrary for computers, but it would be generic if you were selling apples. Finally the most distinctive marks are fanciful. They are made up words, Panasonic, Kodak, Exxon. These words are highly distinctive, and because they do not exist in the English language they are the strongest types of marks. The vast majority of marks are suggestive.
Using a suggestive mark allows the brand to communicate some piece of information about the product that would not otherwise be known to the consumer. In fact, suggestive marks are so common that we often analyze suggestiveness on its own spectrum. There are weaker suggestive marks and stronger suggestive marks, if a mark is suggestive but on the weaker side of the spectrum then it will not be as protectable. They're still capable of distinguishing your goods or services, but you will probably have to coexist with many other brands that are similarly suggestive.
Now, we know what a mark is, it is anything capable of distinction, and we know how to judge how distinctive a mark is. This is the starting place for the rest of what we need to learn about trademarks and trademark law.
DISCLAIMER: This course is taught by an attorney and addresses US law concepts that may not apply in all countries. Neither LinkedIn nor the attorney teaching the course represents you and they are not giving legal advice. The information conveyed through this course is akin to a college or law school course; it is not intended to give legal advice, but instead to communicate basic information to help viewers understand the basics of intellectual property.