WHAT IS A TRADEMARK?

Trademarks run a spectrum from very strong marks to very weak marks to marks which can not truly be called trademarks. The strongest mark is a fanciful mark. That is mark which uses a made up word such as "Exxon" or "Adidas". Those words did not exist until the companies created them. The next strongest marks use words which already exist, but are not associated with the product, such as "Shell" for petroleum products. Shells clearly have nothing to do with petroleum. The next mark down the spectrum is a suggestive mark, which is a weak mark. Suggestive marks are marks which suggest the nature of the product or service but do not overtly tell what the product or service actually is. "Staples" and "Home Depot" are both suggestive since, even if you did not know what they sold, you could make a reasonable guess. Staples could manufacture staples, specialize in fastening things together or sell office supplies. Suggestive marks are entitled to be federally registered.

The weakest registerable mark is called a "merely descriptive" mark. This is a mark in which the mark itself describes the product or service, such as "United Parcel Service" (it is a parcel service) or "The History Channel". The product or service does not need to be described in order for the consumer to know what is being sold. This type of mark can not be Federally registered until it can be shown that the consumers already associate the mark with the product or service being offered.

Finally, there are generic marks. These can never be registered, no matter how long they may be used. An inventor can not create a wood and carbon writing instrument a give it the trademark "Pencil." Pencil is generic and can never be registered to anyone.

In order to be considered a trademark or service mark, the mark needs only to be used as a trademark or service mark. No registration, either state or federal, nor any other permission is necessary. The mark must merely be used as a trademark. or service mark. For instance, if a company uses its company name merely to provide an address or a contact for suppliers and other non-consumers, the name is not being used as a trademark. If the name is used to attract the attention of consumers, it is being used as a trademark.

Every company should review how it uses its company name, the names of the company products, the company slogans, and the company logos. Anyone who doubts the value of such a review should consider what would happen if a company could no longer assure that it would continue to have the exclusive rights to use of its marks. A review does not have to be done yearly. However, when there is a new company, service, product, logo or slogan trademark counsel should be consulted. A trademark or service mark search should be considered. A search not only helps to determine that a mark is available, it also prevents accidental infringement on another company's mark. The easiest time to change a trademark or service mark is before it is introduced to consumers, not afterward.

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