A TRADEMARK MUST IDENTIFY THE SOURCE OF A PRODUCT OR SERVICE.

Not all words and pictures can be protected as marks for products and services. To be protectable, the mark must be capable of distinguishing one company’s products or services from those of others. Although a trademark does not have to tell purchasers who the company is that is the source for the product, the trademark must convey to purchasers that this particular product either comes from or is authorized by a single source. For that reason, generic names of products and services can never be a trademark. Examples of generic names would be the word “chair” for a seat having a back, or the word “automobile” for a vehicle that rolls on the ground. It would be fundamentally unfair to permit a single company the exclusive right to use such a generic name to refer to their product. At the other end of the spectrum are arbitrary or coined words that have no relationship to the underlying product and may not be a word at all. An example often given of a coined trademark is “Kodak.”

Between the generic and arbitrary ends of the spectrum are the remaining types of words and designs that bear some relationship to the underlying product. Two other categories have been named for purposes of analyzing the protectability of a trademark. The category of “suggestive” marks falls just before arbitrary or coined marks. A suggestive mark is one that suggests some attribute of the underlying product or service, but does not actually describe the product or a feature of that product. Suggestive trademarks can be immediately protected upon commencing use.

“Descriptive” marks fall between generic terms and suggestive marks. A “descriptive” term is one that actually describes the product or a feature of the product, but is not the common generic name of the product. When a “descriptive” term is first used, purchasers recognize it as describing some feature of the product and not as distinguishing that product from those of competitors. If a “descriptive” term is used sufficiently and by only one source for a product, that term can gain recognition among purchasers as identifying a single company’s product. At that point, the “descriptive” term will have achieved trademark significance and can be protected. This is referred to as achieving “secondary meaning”: the term no longer has just its “primary” descriptive meaning, but also has its “secondary” meaning as a trademark for this particular product.

PROTECTION AND REGISTRATION OF TRADEMARKS AND SERVICE MARKS.

Trademarks are protected under federal law, state statutory law, and the common law. A trademark does not have to be registered in order to be protected. Although an application to register a trademark can be fi led before the trademark is actually used, protection of the trademark arises from a company’s use of a trademark. Trademarks not only benefit their owners, but benefit the public by allowing the public to distinguish and purchase a type of product from the particular source the customer intends. As a result, if sufficient use of a trademark has been made, it may be protected in the courts without a registration. Registration does, however, provide significant benefits for protection of trademarks.

A federal registration on the Principal Register creates a presumption that the owner is entitled to exclusive use of that mark on the registered goods, and therefore solves many proof problems in litigation. A federal registration establishes the owner’s rights in the trademark throughout the United States. Without a registration, common law trademark rights only arise in those geographic areas where sufficient use has been made of the trademark. A federal registration carries with it a right to sue in the federal courts, as well as the potential for recovery of profits, damages, costs, triple damages, and attorney’s fees. A registered trademark can be fi led with customs to stop infringing importations. After registration for five years, it is possible for the registration on the Principal Register to become incontestable and severely limit the grounds for attacking the validity of the registration.

States provide for registration of trademarks, but these state registrations do not have many of the benefits of a federal registration. Although not as preferred as a federal registration, there may be instances in which a federal registration cannot be pursued but a state registration is available.

The incorporation of a company with a state and the registration of the company name with the state as part of that incorporation process is not the same as a trademark registration. The incorporation under a particular name in a state and the various other methods of registering an assumed name with a state are for various reasons such as tax or notice purposes and provide little, if any, protection for a trademark. These types of filings provide little benefit in establishing rights to stop others from use of a company’s trademark or defend against claims by a competitor of trademark infringement. A common error of companies is the belief that once incorporated with the state under a given name; the company now owns that name and can both enforce it against competitors as well as be free of infringement claims. Although sufficient use of a company’s trade name can establish substantial common law trade rights, incorporation with a state alone does not generate trademark rights.

If you have questions about trademarks, contact our Michigan IP lawyers at (616) 975-5500.