How the Law Protects Trademarks
The law protects trademarks by authorizing a trademark owner to file a lawsuit to:
- prevent others from using it in a context where it might confuse consumers, and
- recover money damages from a someone who used the mark knowing that it was already owned by someone else.
The law also protects famous marks by allowing owners to sue to prevent others from using the same or similar mark, even in contexts where customer confusion is unlikely. Not all marks are entitled to an equal amount of protection, however - and some aren't entitled to any protection at all.
The basic rules for resolving disputes over who is entitled to use a trademark come from decisions by federal and state courts (the common law). These rules usually favor the business that first used the mark where the second use would be likely to cause customer confusion. A number of additional legal principles used to protect owners against improper use of their marks derive from federal statutes known collectively as the Lanham Act (Title 15 U.S.C. § § 1051 to 1127). And all states have statutes that govern the use and protection of marks within the state's boundaries.
In addition to laws that specifically protect trademark owners, all states have laws that protect one business against unfair competition by another business, including the use by one business of a name already used by another business in a context that's likely to confuse customers.
As a general rule, trademark law grants the most legal protection to the owners of names, logos and other marketing devices that are distinctive - that is, memorable because they are creative or out of the ordinary, or because they have become well known to the public through their use over time or because of a marketing blitz.
Which marks receive the least protection?
Trademarks and service marks consisting of common or ordinary words are not considered inherently distinctive and receive less protection under federal and state laws. Typical examples of trademarks using common or ordinary words are:
- people's names, such as Pete's Muffins or Smith Graphics
- geographic terms, such as Northern Dairy or Central Insect Control, and
- descriptive terms - that is, words that attempt to literally describe the product or some characteristic of the product, such as Rapid Computers, Clarity Video Monitors or Ice Cold Ice Cream.
However, non-distinctive marks may be come distinctive through use over time or through intensive marketing efforts. And marks consisting of common terms or names may be distinctive because the words are combined into a clever phrase or slogan, such as " Taco Johns" or " Don't Leave Home Without It," or because the name itself is highly unusual, as in Orville Redenbacher's Popcorn Products.
Absolutely. Even if a mark is not inherently distinctive, it may become distinctive if it develops great public recognition through long use and exposure in the marketplace or because of intensive marketing efforts. A mark that becomes protected in this way is said to have acquired a " secondary meaning." In addition to Ben and Jerry's, examples of otherwise common marks that have acquired a secondary meaning and are now considered to be distinctive include Sears (department stores) and Park 'n Fly (airport parking services.)
Yes. When a trademark is used to describe a type of product rather than a brand of product, the mark is said to be generic and won't be given any protection. Sometimes an inherently distinctive mark is so successful that people start to consider the mark to be synonymous with the product itself, and the mark becomes generic. For example, aspirin was originally a highly distinctive brand name for a type of analgesic (salicylic acid). After a while, aspirin became synonymous with salicylic acid itself and was no longer considered distinctive. Escalator and cellophane were once distinctive marks, as well. And not too long ago, the Xerox mark for photocopiers was in grave danger of losing protection because of the common use of the term as a noun (a xerox) and a verb (to xerox something). To prevent this from happening, Xerox launched an expensive campaign urging the public to use " Xerox" as a proper noun (Xerox brand photocopiers).
Sometimes the name originally chosen for a mark is simply too descriptive of the underlying product to qualify for trademark status. For instance, assume that a new cellular telephone manufacturer calls its product " The Cellular." Because the term " cellular" is the descriptive name for the product itself, it cannot legally be considered a trademark or service mark. If the term " cellular" were used on a facial creme, however, it would be considered suggestive, and therefore distinctive, in that context.
The short answer is yes. Most people are familiar with website names like http://www.times.com or http://www.uspto.gov. The words between " www" and the extension following the period - for example, com, org, gov or edu - are typically used to identify the business that owns the website or a well known product or service that is featured on the site. Frequently, this identifier is an abbreviation of the company or product name. The U.S. Patent and Trademark Office allows these identifiers to be registered as trademarks as long as they are being used in connection with a site that is, in fact, providing goods or services. And the courts offer them the same protection as other types of trademark.