Trademarks and Service Marks have their own special language. Here are some terms that will help with understanding just what we’re talking about.
Trademarks and Service marks are words, pictures, colors, sounds, and smells that uniquely identify your goods and services in the marketplace. Trademarks are applied to goods. Service marks are applied to services. The two terms are often used interchangeably in casual use, while the term “mark” can be used to refer to either.
Common Law marks develop through the use of a mark in connection with particular goods or services. They are not registered with a government agency. Because the law assumes that consumers have come to identify the goods or services that have been provided under a particular mark as coming from that single source, the source develops rights to that mark. The law always seeks to protect consumers from confusion caused by parties who later adopt similar marks. Common law rights are limited to the geographical areas in which they’ve been used, and can be expensive to prove in court.
Registration means that your mark has been registered with a governmental authority as your trademark or service mark. State Registrations are generally inexpensive and document Common Law rights within a limited geographic area. State registrations register your claim to a mark, but do not grant rights to the mark. Registering a company name or assumed name with the Secretary of State’s Office is not the same as obtaining a State Trademark Registration.
Federal Registrations give the owner national rights to use a mark. In addition, “Intent to Use” applications are only available within the federal registration system. These applications allow you to claim rights to a mark before it is used in the marketplace. An application for a Federal Registration is evaluated against all other marks on the national register. Over time, the strength of a Federal Registration increases, because the grounds upon which the registration can be cancelled are narrowed. Filing fees for a Federal Registration run between $275 and $350, depending on the method used to file the application. Federal Registrations take close to a year to obtain.
Arbitrary Marks, Descriptive Marks, and Generic Terms. The registrability of a mark, and the scope of rights attached to that mark, depend on the type of mark you are using. Trademarks are generally classified on a scale which ranks arbitrary or fanciful marks at one end, descriptive marks in the middle, and generic terms at the opposite end. If a word in the trademark is the generic term for the item, the law will not grant rights in that word to any party. On the other hand, an “arbitrary or fanciful” mark is considered strong and readily protectable against third party uses. For example, “apple”–when used in connection with a shiny red fruit–is an unprotectable generic term. But, when “Apple” is used in connection with computer products, the mark is arbitrary and considered a strong trademark. When a mark describes some element or aspect of the product or service, the mark is “descriptive” and will not become protectable until there is some evidence that consumers identify a single source for that product. The more descriptive a mark is, the more evidence is required and the weaker the mark is considered.
Clearing a Mark means to search public records conflicting third party uses. Trademark searches generally involve a search of the Federal Register, the State Registers, corporate name records, domain name records, the internet, and industry indexes.