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  • Curington Law, LLC

What is a Trademark?

A trademark identifies that the goods bearing the mark come from. A service mark performs the same function, but for services rather than tangible goods. However, the term “trademark” is often used for marks that identify both goods and services. A trademark is essentially a brand name.

There are important differences between trademarks and copyrights and patents. Trademarks identify the source of goods and services and, unlike patents and copyrights, can last forever with continued use. Copyrights protect original works of authorship (e.g., literary, musical, or sculptural works, etc.), and have a long but limited lifespan. Patents are government-issued monopolies granted to new inventions (e.g., machines, methods of manufacture, processes, or compositions of matter) and last for a period of 20 from the date the patent application is filed.

Trademarks serve two functions. First, they protect consumers by preventing confusion. Without trademark protection, a consumer could select an inferior product without realizing their mistake. Trademarks let the consumer know that the product or service they select will be from the same source and of the same quality as other product or service they have purchased in the past. Second, trademarks protect their owners’ investments in goods or services by giving the trademark owner control over the “goodwill” or “reputation” represented by the mark. Without trademark protection, a seller of a high-quality product would have no recourse against a competitor who sells an inferior product under a similar name.

Trademarks come in many different forms. The most common include:

• Word marks (“Uber” or “Xbox”) Logos (the Nike swoosh or Microsoft’s quad-colored tiles) • Slogans (“Finger lickin’ good” or “Just Do it”)

Other less common, but nonetheless protectable trademarks include:

• Sounds (NBC’s three-note chime) • Colors (Owens-Corning’s pink fiberglass insulation) • Smells (the scent of Play-Doh) • Non-functional product or packaging shapes (the shape of a Coca-Cola bottle)

What Makes a Good Trademark?

Trademarks are not all the same. Some are stronger than others and thus provide more brand protection. Generally, a trademark’s strength is measured by its distinctiveness relative to other words, symbols, slogans, etc. The four categories into which virtually all trademarks fall are:

• Arbitrary/fanciful • Suggestive • Descriptive • Generic

Arbitrary and fanciful marks are “inherently distinctive” and provide the highest level of protection. An arbitrary mark is a word or symbol that has a common meaning that is completely unrelated to the products on which it is used, such as “Apple”, “Dove”, and “Camel.” A fanciful mark is typically a made-up word that is used only in connection with the products on which it is used, such as “Rolex”, “Exxon”, and “Xerox.”

Suggestive marks are also inherently distinctive, but provide less protection than arbitrary and fanciful marks. A suggestive mark suggests or hints at the nature of the goods or services and requires the consumer to ponder deeply to figure out what product or service is being associated with the mark. Examples of suggestive marks are “Greyhound” and “Netflix.”

Descriptive marks merely describe a quality or feature of the goods or services (including geographically descriptive marks and surnames), such as “Texas Instruments,” “Mrs. Field’s,” and “Lyft.” These marks are not inherently distinctive. Rather, to function as a trademark, the proponent must demonstrate that the mark has “acquired distinctiveness” or “secondary meaning.” The proponent can show acquired distinctiveness by submitting evidence that the public perceives the descriptive term as a source-identifying mark. Such evidence can include:

  • Substantially exclusive and continuous use as a trademark (generally around five years)

  • Extensive advertisements using the descriptive term as a trademark

  • Customer declarations or surveys

  • Consumer confusion

  • Copying by competitors

A few examples of descriptive terms that have acquired distinctiveness necessary to function as trademarks include SPORTS ILLUSTRATED, MICROSOFT WINDOWS, and 5-HOUR ENERGY. Other examples of descriptive words that have acquired secondary meaning and become protectable as trademarks are SHARP for televisions and HOLIDAY INN for hotel services.

The lowest level on the scale of distinctiveness is generic terms, which are common words or symbols for goods and services that are not distinctive and can never function as trademarks. Examples of generic terms include “corn flakes,” “aspirin,” “watch,” etc. Trademarks can also become generic – a process known as genericide – by widespread public use of the trademark to refer to the general category of the product. Terms that functioned as trademarks in the past that have now become generic include “escalator,” “linoleum,” and “thermos.” Generic words or phrases are not registrable or protectable in relation to the products or services they signify.

For more on trademarks, contact Curington Law, LLC at 312 803-1755 or online.





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