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  If it is true that we live by symbols, it is no less true that we purchase goods by them. In addition to the more traditional trademarks comprising names, symbols and logos a trademark may be a personal name, a scent, sound, slogan, color, package or any number of other indicators of the source of the goods. However, not all such designations qualify as trademarks, that is, they do not qualify for legal protection in court or for registration in the U.S. Trademark Office. Only those marks that are distinctive are eligible for legal protection. Only marks by which the goods of the applicant may be distinguished from the goods of others are registrable on the Principal Register of the Trademark Office.

Under the definition of "Trademark" in the federal Lanham Act of 1946 the word, name, symbol or device that comprises the trademark must be used to "identify and distinguish" the goods of the trademark owner "from those manufactured or sold by others and indicate the source of the goods, even if that source is unknown." In the eyes of the purchasing public, a design, pattern or slogan seen as mere product ornamentation does not qualify. The use of the mark must distinguish. A Service Mark is similar to a trademark except the word, phrase, symbol, image or device identifies the services of the owner rather than goods, similar to a trade name.

What Makes a Good Trademark?

  Giving due consideration to the elements of a trademark discussed above, the first practical qualification is that the selected trademark does not infringe the exclusive trademark rights of a prior user or owner of the same or a similar mark. That is, the mark will not confuse or cause mistake by the purchasing public. The second significant consideration is whether the mark is potentially registrable in the United States, and perhaps foreign, trademark offices. In addition to determining whether the mark may be confusingly similar to another registered mark, there are a number of statutory disqualifying criteria for registration that must be evaluated. The third goal in selecting a trademark is to chose one that will rank high on the distinctiveness spectrum. Courts rank trademark distinctiveness from unprotectable to highly protectable in the order of (1) generic, (2) merely descriptive, (3) suggestive and (4) arbitrary and fanciful. unprotectable generic names refer to a class of objects, such as bicycles. Unless a name that is descriptive of the goods on which the mark is used has acquired distinctiveness by long use and customer recognition, that is, the mark has acquired secondary meaning, descriptive marks are neither legally protectable or registrable in the U.S. Trademark Office.   Hanes & Bartels, LLC  
Suggestive marks are those that do not describe the goods but may suggest its qualities or attributes. They require some imagination or perception to link the mark to the goods. Arbitrary and fanciful marks are the highest on the distinctiveness scale and are considered strong marks that courts consider highly protectable. They may be coined words such as EXXON, XEROX and KODAK, or they may be common words used in unexpected ways. APPLE for computers, CAMEL for cigarettes. The distinctiveness analysis must consider the mark in the context of the goods or services on which it is applied. For example, APPLE is a generic word and would be an unprotectable trademark for fruit, but it is an arbitrary and strong trademark for computers.

How Do You Acquire Trademark Rights?

  The government does not grant trademark rights. The acquisition of trademark or service mark rights is simple enough. One has to merely use the mark on the goods or services in commerce to become the owner of the trademark. As with most endeavors, however, this simplistic approach is fraught with problems. The blind use of a new mark is an invitation to claims of infringement of marks owned by third parties. Internet domain names and product web sites are also a fertile field of controversy with respect to competing trademarks and trade names.

The resulting conflicts create financial exposure, possible injunctions, wasted time and expense and may lead to the loss of investment and the good will that may have been generated with a new mark. In addition, the use of a trademark, without registration, may deprive the owner of the many advantages of registration that relate to protection of an owner’s exclusive right to use the mark, including the right to use the symbol ®.
  Hanes & Bartels, LLC  

The Role of Legal Counsel

  Selecting and designing a successful trademark is a key element in branding a business. Navigating through the thicket of considerations pertinent to selection and ultimate acquisition of trademark rights requires the services of a legal adviser with knowledge and experience concerning the intricacies of trademark law. The attorneys at Hanes & Bartels LLC have many years of experience in guiding business owners in the selection of a trademark, conducting searches to quantify the risk of future conflict and assess the chances of successful registration of the mark and prosecuting trademark registration applications before the United States Patent and Trademark Office. Similarly, the firm’s attorneys are experienced in matters related to trademark, trade dress, domain name, and related claims of infringement and unfair competition, both as trademark owner’s counsel and as attorneys for a defendant accused of infringement.

Through an extensive network of foreign associates, we can also secure registration for trademarks in other countries of the world.
  This website is not intended to constitute legal advice and may not reflect the most current legal developments. The information contained in this website is provided only as general information. By posting and/or maintaining this website and its contents, Hanes & Bartels LLC does not intend to solicit legal business from clients located in states or jurisdictions where Hanes Hrbacek & Bartels LLC or its individual attorneys are not licensed or authorized to practice law. Responding to this website does not create an attorney/client relationship.