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Trademarks and Service Marks

A “trademark” is a word, design or combination used by an individual or a business to identify its goods or services.  In some cases a trademark can also be a sensory mark–a sound, a color or a smell.  While marks identifying services rather than goods are technically referred to a “service marks” we will use the term trademarks to include service marks.  Trademarks protect names used to identify goods (or services) and their source of origin.  The law protects trademarks in part because trademarked items tend to carry with them certain quality assurances – one would expect an automobile carrying the Rolls Royce trademark to be far superior to most other automobiles.  You may use any kind of name or symbol as a trademark to identify your product.

A mark is any word, name, symbol, or design that identifies a product or service.  A trademark identifies a product (for example, Coca‑Cola).  A service mark identifies a service (for example, Holiday Inn).  A mark may be registered with the United States Patent and Trademark Office (USPTO) if the mark distinguishes a person’s product or service from products or services of competitors.  Registration of a mark on the Principal Register of the USPTO entitles a person the exclusive use of the mark.  Registration can also be accomplished with a State (usually with the Secretary of State of a particular state).  However, State registration does not provide as much protection as Federal registration.  Before a mark can be registered, it must be used by the “owner,” and it must distinguish goods or services from others.  The owner of a mark cannot register it with the United States Patent and Trademark Office unless the mark is used in interstate commerce.

Generic terms that merely describe a class of products cannot be registered.  For example, the term motor oil or the word airline would not be accepted for registration.  Descriptive or geographical terms cannot be registered unless they have acquired a secondary meaning.  A mark acquires a secondary meaning when, through long usage, the public identifies the mark with a particular product.  For example, Best Western Motels involves a mark which has a secondary meaning. 

One can be an owner of a trademark or service mark, whether or not it is registered.  This is common law protection.  Registration is proof of ownership and makes ownership rights easier to enforce.  The basic question in lawsuits over marks is whether or not the general public is likely to be confused as to the origin of the service or product.

If the owner of a mark permits widespread use of the mark to describe a general class of products, the exclusive right to the mark may be lost.  Two examples are cellophane and aspirin.

Trade dress is the total appearance of a product, including its packaging, label, shape, and size.  Trade dress may also include physical structures associated with a particular product or service, such as the “golden arches” of McDonald’s.  Trade dress may qualify as a protected trademark or service mark if it is distinctive and identifies the source of a specific product or service.

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