What is a trademark?
A trademark is a word, phrase, symbol, or design, or a combination of those, that identifies and distinguishes the source of goods of one party from the goods or services of another.
The important part of that, is that the trademark is designed to identify the SOURCE of the good or service, NOT THE NATURE. It is the difference between saying the words delicious hamburger and the words delicious Big Mac. If I say hamburger, you could be thinking of any piece of meat between buns. Maybe there’s mustard on it, maybe there’s ketchup on it, maybe there’s barbecue sauce on it, we are in Texas.
But when I say Big Mac, you automatically have a deeper understanding of what you can expect, right? You know that it is from MCDONALDS. No one else has a Big Mac. You know it’s always going to be two all beef patties, special sauce, lettuce, cheese, pickles, onion, on a sesame seed bun. You know what kind of container it comes in, how the French fries taste, all that. In other words, there is no mistaking the Big Mac, or McDonalds, from other purveyors of hamburger products. McDonald’s is one of the most recognizable trademarks in the world.
Now look at Umami Burger. They also make hamburgers. When you think of Umami Burger, you will likely, hopefully, get an entirely different feeling in your brain and stomach. Umami Burgers are going to be more high end, and have more “refined” toppings and flavors.
Essentially, the trademark is a way to protect the PUBLIC from brand confusion. If trademarks did not exist, then probably every hamburger joint would have a Big Mac, and that concrete feeling you have now, the feeling that you know what you are getting with a Big Mac, would be eroded. Copycats would dilute or destroy the ability to distinguish brands.
The patent and trademark office want to protect that feeling. It’s a good feeling. So, it is from that fundamental prism, protecting the PUBLIC from confusion, that the rights of the trademark holder are viewed by the law.
Trademarks come in four main categories. They are broken down into these categories by the amount of protection that they receive, which again, is partially based on preventing consumer confusion.
First, there is ‘fanciful’ or ‘arbitrary.’ These marks are either made-up, like Exxon, or a word that would not ordinarily be associated with that particular product. So for example, Google or Nike.
Partly because the mark itself does not describe the nature of the good, and partly because they are usually created out of thin air, there is less likelihood that the public will be confused between any two fanciful or arbitrary marks. And therefore, these types of marks are granted the strongest protections. Meaning that the United States Patent and Trademark Office will do their best to protect the mark, and the mark holder will have better chances going after copycats.
Second, there is suggestive. Suggestive marks are those that only hint at, or are suggestive of the nature of the good or service. For example, CitiBank or Coppertone, or my company, WedFormz, which combines ‘wedding’ and ‘formz’. You can see that these are merely suggestive, and do not necessarily hit you over the head with the nature of the good. Suggestive marks are second only to fanciful and arbitrary marks in terms of protection.
Third, there is descriptive. A descriptive mark describes the nature of the good or service. For example, Holiday Inn and Sharp Television. Generally, a descriptive mark can only be registered if it has become DISTINCT, in other words, has a secondary meaning, or still put another way, like how we think of McDonalds, the mark gives you that feeling in your brain and stomach. Obviously, this can be a difficult process.
Last names fall into the descriptive category. Think Hilton Hotels. At this point, Hilton Hotels has acquired a distinct meaning. So, if tomorrow, Sanchez Hilton started a Hilton Hotel, he would get shut down.
Fourth is generic. Generic marks use common, every day terms. Car, Hamburger, Lite Beer, Smart Phone. As you can imagine, if you attempted to trademark ‘Hamburger’ for a business that sells hamburgers, you’d get two slaps in the mouth from the trademark office. In other words, you cannot register a generic mark.