1. Sources of Trademarks Law
2. What Are the Criteria for a Trademark?

Understanding trademarks law begins with knowing what a trademark is. A trademark is any symbol, phrase, word, or combination thereof that distinguishes a company's products from the competitors. Words that are associated with the manufacturer, or a generic name, are not trademarks. 

Some examples would be Nike and the Nike “swoosh” symbol, which distinguish the apparel made by Nike from that of other companies, such as Reebok. In the same way, the words “Coca-Cola” distinguish that company's soda product from Pepsi and other competitors.

When a mark identifies a service, such as “Jiffy Lube,” instead of a specific product, it's called a service mark. The terms "trademark" and "service mark" are often used interchangeably. 

A product's packaging, the color used to identify it, and other characteristics can also be a trademark.  This is commonly referred to as trade dress, but it is protected as a distinguishing feature of a product. Examples of trade dress is the pink color used for Owens-Corning fiberglass insulation or the shape of Coca-Cola bottles.

Trade dress isn't protected if it serves a competitive or functional purpose. A manufacturer can't protect the use of a bottle shape, for instance, if it offers some advantage for the product, like being easier to grip or stack. 

Thanks to trademarks, consumers can more easily identify the manufacturer of a specific good. This keep them from having to read the fine print or ask an employee for help while shopping, since they can simply look for identifying features.

When their products and services are easy to identify, manufacturers also have more reason to care about the quality and appearance of their work. If consumers try an identifiable product only to find it is low quality, they can easily avoid that brand from then on. 

Sources of Trademarks Law

Both federal and state laws govern trademarks. Until Congress established the first federal trademark law in the late 19th century, trademarks were protected by the common law of states. Federal trademark law has expanded since then and surpassed state common law to become the primary source of protection for trademarks. Trademarks are still protected by state law as well, but now a trademark can be assigned on a federal level if it's used in interstate commerce. 

The Lanham Act, passed in 1946, is the primary federal statute regarding trademarks. This act defines a trademark as a mark used in commerce or registered with the intent to do so. If the mark isn't currently being used at the time of application, it can still be registered if the applicant can establish a written, good faith intent to use it at a future date. In 1996, the Lanham Act was amended.

The Lanham Act and Title 37, Part 2 of the Code of Federal Regulations contain the rules regarding federal trademark registration. The United States Patent and Trademark Office processes trademark registration applications and oversees trademark registers. 

If a registration application is denied, the applicant must amend the application or reply within six months. The application will then be reevaluated. This procedure can repeat until either of the following happens:

  • The examiner issues a final refusal for the application.
  • Six months pass without an amendment, appeal, or reply from the applicant.

What Are the Criteria for a Trademark?

Four categories, based on the relationship between the mark and its product, are used to determine if a mark is distinctive:

  • Fanciful or arbitrary
  • Suggestive
  • Descriptive
  • Generic

The marks in these four categories vary based on their distinctiveness. Trademark requirements and the legal protection granted a trademark depends on its designated category.

  • Fanciful or arbitrary marks do not logically relate to their product. They are therefore inherently distinctive.
  • Suggestive marks point to one of the product's characteristics but do not describe it.
  • A descriptive mark directly describes the quality of the product or one of its characteristics. However, a descriptive mark isn't inherently distinctive.
  • A generic mark describes the general category of the product and offer no distinction or protection.

The laws regarding trademarks and other forms of intellectual property can be complicated and difficult to navigate on your own. A professional attorney can walk you through the types of protection available and assist with any paperwork involved.

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