The Nature of Trademarks

We frequently hear from clients that they have just come up with a brilliant name for a business or product and that they want to prevent others from using it first. For illustration purposes, let's say that the name of choice is "Great Scott". The first step clients often take is to register as many Internet domain names relating to "Great Scott" as they can. Next, they turn to their attorneys and say "I want to register "Great Scott" as a trademark so no one else can use it." This approach demonstrates a fundamental misconception of what a trademark is, and what it can do for its owner.

What is a Trademark?
A trademark is a name, term, symbol or other mark that identifies a product or service as owned by an individual or entity in a commercial setting. (Properly speaking, a "trademark" is used in connection with goods, while a "servicemark" is used with the provision of services; for simplicity, this memo uses the blanket term "trademark" to refer to both). In other words, product or service needs to be offered "in commerce" to others, and the trademark needs to associate that product or service with the mark's owner. For example, "Sprite" refers to a specific product sold in commerce by the Coca-Cola Corporation.

Trademark rights exist whenever a party uses a mark or term in commerce, in connection with a product or service, and where the mark is sufficient unique to make it clear to the average person that the mark and the product/service relate to a specific person or entity. Thus, it is not necessary to take file anything in order to have trademark rights. However, registering a trademark with the U.S. Patent and Trademark Office (and/or corresponding agencies in other countries) greatly facilitates the process of protecting a trademark from infringement by others. The existence of a registration is an indicator that an expert has reviewed the mark, the use of the mark, and potential overlaps with other marks, and has determined that the mark is sufficiently unique that trademark protection should be permitted. Registration is not a barrier against infringment, nor does it guarantee that the trademark will be forever protectible. It is simply one piece of evidence of a proprietary right to a specific mark.

Anyone claiming trademark rights may use the "TM" or "SM" symbols used to denote trademarks. The ["R"] symbol is reserved for use only in connection with registered marks, and should be used accordingly.

Use in Commerce
On filing an application to register a trademark, the applicant must specify the goods and/or services to be provided in connection with the mark. Thereafter, the description of the goods/services may be narrowed, but may not be expanded (of course, additional applications may be filed as to new types of goods or services as needed). Thus, it is not possible to register "Great Scott" as a trademark to keep in one's back pocket and use as desired. In contrast, one may register greatscott.com and file with state authorities to form a company called "Great Scott, Inc.", allow them to remain dormant for some time, then revive them for a purpose unrelated to the original intent. Company names and domain names are purpose-neutral, while trademarks have no value except in relation to the underlying goods or services.

For many early-stage companies, it must then be asked "how sure are you that the product or service you have in mind now is the one that will ultimately be provided to the public?" If development has just begun, it may not be clear that the current vision of the product will prevail throughout the development, testing and consumer acceptance process. If signficiant changes occur, it is possible that the description of the goods/services will cease to related to the goods or services actually provided, and the registration will offer little protection.

A trademark application may be filed prior to actual use of the mark in commerce, but evidence of use will need to be provided to the Trademark Office before the mark may be registered. Due to the length of the application process, it could be two years or more before this evidence is needed. Failure to provide the evidence prior to the final deadline, however, will cause the application to be abandoned and the applicant will need to restart the application process from scratch. It may be beneficial to file the application prior to use in order to "reserve" the mark so that others may not usurp it. However, applicants need to be aware that (a) in the event of substantial change to the product/service during development, the application may cease to be relevant to the applicant's new purposes, and (b) if evidence of use is not filed, the application will be abandoned.

Descriptiveness
Another issue that many people struggle with is "what makes an appropriate mark?" The Trademark Office has extensive rules regarding this, which can only be summarized in the briefest fashion here. Generally, however, if the average person sees/hears a mark and immediately understands the nature of the underlying goods or services, the mark is considered "descriptive" or "generic" and will not be registrable. Conversely, a mark that does not clearly identify the underlying goods/services and uniquely associates the goods/services with the mark's owner will be considered a registrable mark. Thus, "Amazon" does not immediately indicate a bookseller (except insofar as Amazon.com has become a well-known business) and would be registrable on that basis. In contrast, "Books On Us" clearly connotes "bookseller" to the average person, and would not be registrable.

Degrees of descriptiveness exist, such that a mark may meet the minimal uniqueness requirements to be registrable, but is nevertheless somewhat descriptive. This is considered a "weak" mark, and may not afford strong protection. "Aspirin" is an example of a mark that has become weak over time as it has become associated with a type of product (i.e. generic) rather than the products of a specific company.

A certain degree of tension may exist between this requirement and the urge to use names, particularly for products, that relate to the underlying product. To the extent that trademark protection is desirable, care should be given to choosing names that are not readily associated with the underlying products or services.