Law of Trademarks

The law of trademarks is a set of rules that governs the protection of certain forms of intellectual property. Trademarks can be phrases, words, or symbols, and are used to identify the goods of a manufacturer. While most trademarks are words or letters, they can also be symbols and drawings, or even sounds or smells. There is almost no limit to the items that you could trademark.

Both the word “Nike” and the famous swoosh symbol are trademarks owned by the Nike company. Another famous trademark is the phrase “Coca-Cola,” which is used to distinguish this brand of soda from others available on the market. Even identifying features, such as the distinct pink color of Owens-Corning fiberglass, can be trademarked.

In regard to trademarks, identifying features are usually referred to as “trade dress.” While these features can be protected, these protections will usually only be granted if they are used by consumers to identify a product. Identifying features that provide a competitive advantage cannot be trademarked. For instance, the shape of a bottle cannot be trademarked if its shape makes it more functional than other bottles. However, if the shape is purely for aesthetic purposes, it can be trademarked.

Consumers can use trademarks to identify the manufacturer of goods. So, instead of reading a label, a customer can look for the trademark to ensure they're buying the correct product. By making it easier for consumers to identify goods, manufacturers are given an incentive to produce quality goods.

Trademark laws are extremely important because they make sure that trademarks are used properly. While almost all symbols, phrases, and words can be used for trademarks, there are certain limitations such as the functionality doctrine. The United States Patent and Trade Office (USPTO) routinely rejects marks that have no secondary meanings.

The USPTO also denies trademarks that:

  • Could be considered immoral.
  • Are also used to identify a geographic location.
  • Would likely cause confusion with other trademarks.

What Sources of Law Govern Trademarks?

Intellectual property rights protect trademarks. The use of a device, such as a word or phrase, to distinguish a manufacturer's goods is governed by trademark law. Trademark law also covers service marks, which are used to identify services instead of goods. There are trademark laws at both the state and federal level.

Initially, trademarks were mostly protected by state common law. In the 1800s, Congress passed the very first federal law covering trademarks. Trademark law has expanded over the years, and in modern times, much of what was once protected by common law is now covered by federal law.

The Lanham Act, which was last amended in 1996, is the main federal statute related to trademark law. Federal laws provide the most robust protections for trademarks. However, state protections are still available When a trademark is registered federally, it will be protected everywhere in the United States. If you want to protect your mark as fully as possible, it's best to register with the federal government. If federal registration isn't possible, you should register with a state government.

Once your trademark has been federally registered and approved, you will be entitled to use the ® symbol. You can use the ™ symbol for unregistered trademarks and the ℠ symbol for unregistered service marks. Trademark law now includes anti-dilution protections as well as protections for trade dress.

What Prerequisites Must a Mark Satisfy in Order to Serve as a Trademark?

To be registered as a trademark, a mark must be so distinctive that it can easily be used to identify your product.

When a court is attempting to determine if a mark is distinctive, four categorizations are used:

  1. Fanciful or arbitrary.
  2. Suggestive.
  3. Descriptive.
  4. Generic.

Due to the vast differences between these categories, the protections that a trademark will be granted largely depends on the category into which it falls.

Fanciful or arbitrary marks are trademarks that do not have a reality-based relationship with the product they identify. For example, trademarks such as Apple or Kodak do not indicate the type of products that they are used to brand. Another good example of a fanciful mark is the Nike “swoosh,” which has nothing to do with shoes or athletic apparel.

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