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Trademarks - Everyone Wants Them, But What Are They?

Trademark protection encompasses two distinct concepts – trademark protection, which is discussed below, and service mark protection, which is discussed in a subsequent article.

What’s a trademark? The United States Patent and Trademark Office (the “USPTO”), which is the entity designated with issuing federal trademark, service mark and patent registrations, defines a trademark as a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. The important concept behind trademarks, as the definition states, is that they identify a source of goods offered for sale to the public by a person, business or some other entity. Unlike some other forms of intellectual property, trademarks do not expire. They can continue in perpetuity as long as the owner of the trademark continues to use the work, phrase, symbol, and/or design in commerce.

Trademarks can be associated with the source of a product as it relates to an overall brand or a specific product offer by the brand. Turning first to trademarks relating to the source of a product coming from an overall brand, let’s revisit the Apple Inc. example provided in discussing defining the elements comprising a brand, which is a separate article provided for your overall understanding. Apple and the associated Apple logo are registered trademarks of Apple Inc. These trademarks indicate the source of products sold by Apple Inc. For instance, the glowing apple logo with the bite out of it on the cover of a MacBook Air indicates the laptop is an Apple Inc. product. Similarly, the word “Apple” and the same apple logo with the bite out of it is prominently displayed on the packaging for the MacBook Air as well as all other Apple Inc. products. Finally, the outside of all Apple Stores also bears these same trademarks, which tell the consuming public that Apple Inc. products can be purchased inside. All of the foregoing examples show trademarks that are associated with the source of a product. Another way to think of this concept is that of a brand umbrella where there is an overall brand acting like an umbrella with individually trademarked products standing underneath the umbrella. In this scenario, the individually trademarked products are associated with source, which is typically the person, company or other entity offering the products for sale.

Trademarks can also link a specific product that the consuming public associates with to a particular source. Let’s stick with our Apple Inc. example. Apple Inc. owns the registered trademark for “iPhone.” An iPhone is a specific product. The term “iPhone” is also a trademark because it is how Apple Inc. chose to brand, or name, its product. As such, people immediately associate the product (iPhone) with its source (Apple Inc.). Another example would be the Big Mac sold by McDonald’s Corporation. People immediately associate the Big Mac (the product) with its source (McDonalds Corporation).

The preceding examples bring up an interesting question. Can a brand incorporate two or more trademarks in a single place, package or website? The answer is yes. Let’s go back to our McDonald’s Corporation – Big Mac example. Big Mac’s are packaged in a small, cardboard box. On the outside of the box there is the trademarked name of the product (Big Mac) and the trademarked name of the source for the product (McDonald’s). The same is true with an iPhone box. The box contains several trademarks owned by Apple Inc. First, it contains the trademark Apple Inc. logo of an apple silhouette with a bite from it. Second, the box contains the trademark indicating its source (the word “Apple”). Finally, it contains the product trademark – iPhone - that is uniquely associated with Apple Inc.

Now that you have a better understanding of what trademarks are, let’s take a look at what is not a trademark. Trademarks are distinctive identifications of a source of goods offered for sale from a particular person, business or some other entity. One cannot trademark a generic term used by the public in everyday conversation to describe an item, type of product, service or business. For instance, you cannot obtain a trademark for the word “hamburger” or “cheeseburger” because those are generic terms used in everyday parlance by the public to describe a type of food. Rather, a trademark must be a distinctive identification of a source. Thus, while you cannot have trademark rights in the term “burger,” the phrase “In-n-Out Burger” is capable of trademark protection. The key is distinctiveness or something that sets it apart from the rest of the pack.

There are several other categories of words and phrases that are incapable of serving as a trademark, such as geographic and descriptive terms. For instance, you cannot trademark the term “Northwest” or the phrase the “Hawaiian Islands” because they are non-distinctive, directional or geographic terms. Descriptive terms or phrases are those that lack distinctiveness. They are terms or phrases that incorporate expected characteristics of what is being conveyed. An example of a descriptive phrase would be “Italian Pizza.” Pizza originated in Naples, Italy. Thus, using the phrase “Italian Pizza” is merely descriptive of the place where pizza was founded – Italy. Accordingly, you would have to include a more distinctive aspect to the phrase “Italian Pizza” for it to constitute a protectable trademark – such as “Big Top Biggie’s Italian Pizza”.

What do trademarks protect? Trademarks protect the trademark holder/owner from unauthorized use by others. Trademarks also protect the holder/owner from the unauthorized use of confusingly similar marks. For instance, Apple Inc. has the exclusive right to use the term “Apple” in connection with the manufacturing and sale of computers, computer hardware and other electronic devices. As such, Apple Inc. could go to court and obtain an order compelling someone to cease and desist using the term “Apple” in connection with the manufacture and sale of computers, computer hardware and other electronic devices. Likewise, Apple Inc. could also go to court and almost certainly obtain an order compelling someone to cease and desist from using the term “Apples” in connection with the manufacture and sale of computers, computer hardware and other electronic devices. Under both scenarios, Apple Inc. would also have a claim for damages against the defendant related to their use of the same or confusingly similar trademark.

There are two underlying policy rationales for protecting trademark holders/owners against the unauthorized use of the same or confusingly similar marks by others. First, doing so protects the holder/owner of the trademark against others trying to trade off of his or her brand in an uncompetitive manner. This allows people and businesses to invest in and develop consumer goodwill in their brands while providing them with an avenue of recourse should someone attempt to gain a competitive advantage by using a trademark, or a confusingly similar version of a trademark, without the holder/owner’s consent.

The second underlying policy rationale for protecting holders/owners against the unauthorized use of the same or confusingly similar marks by others is that doing so also protects consumers. Brands represent a promise to consumers about a product or source’s quality, contents and components. Consumers rely upon these characteristics when selecting a brand. By granting mark holders/owners protection against the unauthorized use of their brands consumers are also protected against purchasing goods that do not have the quality, contents and components that they expect. Doing so additionally aids trademark holders by helping to instill and preserve consumer goodwill in their brands.

As a point of clarification, the foregoing discussion uses the phrase “holder/owner” or “holders/owners” when discussing trademark protection rights. In this regard, the term “owner” relates to the party that has created a trademark or has secured ownership of a trademark through purchase, acquisition or otherwise. A trademark “holder” is someone who has obtained rights to a trademark that include or otherwise convey through the operation of application of statutory or other applicable law the right to enforce exclusive use.

The following are key points to remember about trademarks:

(1) They can be words, phrases, symbols and/or designs;

(2) They identify a source of goods offered for sale to the public by a person, business or some other entity;

(3) They must be distinctive and not merely descriptive;

(4) A product name can be trademarked when it is associated with a particular source; and

(5) A trademark holder/owner can sue to stop the unauthorized use of the same or a confusingly similar version of his or her brand.

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