Trademark law provides organizations with a way to protect the integrity of their brands in the marketplace, which are represented by words, logos, designs, and the like.
Through a series of rules and regulations, trademark law helps us determine the source of particular good and services by define the scope of legal protection accorded the trademarks on those goods and services.
Trademarks themselves consist of a particular word (e.g. DISNEY®), design (e.g. the apple logo used by APPLE®), or a combination of words and designs (e.g. the Wendy’s Logo). Sometimes trademarks consist of a color (such as brown for UPS® shipping services) or trade dress, which is the distinctive look or packaging of a product, such as the unique style and color of the COCA-COLA® hourglass bottle.
Trademarks play a vital role in commerce because they help consumers distinguish between the goods and services of one seller from another and guide purchasing decisions. If third-parties use similar marks for similar products or services, and they don’t perform as well as the true brand owner’s product/service, then the public got a raw deal and the brand owner’s reputation is harmed. In some industries this may not feel like a big deal, but consider pharmaceuticals and food … getting those wrong is a very big deal. Consumers trust products because of the trademark applied to them. They may not know WHO manufactures it, but they trust it because they trust the brand.
When Can a Trademark Be Protected by Law?
To receive legal protection, a trademark must be unique, distinctive, and in commercial use. Let’s take a closer look.
1. Unique
A new trademark must be sufficiently distinct from other marks to be protectable. In trademark speak, a trademark cannot be confusingly similar to another trademark. This makes sense given that the standard for trademark infringement is likelihood of confusion and is always determined from the consumers’ perspective.
As a practical matter, we look at marks in terms of their appearance, meaning, pronunciation, and commercial impression to determine whether a relevant customer would likely (not actually) confused between the two in front of them.
Do they look the same, visually? Think the Coca-Cola script used on different words.
Do they mean the same thing? Think foreign language translations.
Do we pronounce them the same, even if spelled differently? Think phonetic equivalents.
Do they convey a similar impression to customers? A luxury brand v. a discount retail store.
If the answer is yes, then it’s a no go. The U.S. Patent and Trademark Office actually look at 13 factors to determine likelihood of confusion, so it’s not cut and dry. Very subjective!
2. Distinctive
Trademarks must also be distinctive of the goods and services, not descriptive of them. Here is what I mean.
Trademark distinctiveness is a measure of the relationship between a particular mark and the goods or services it identifies. Highly distinctive marks bear little to no relationship to the marked products, whereas non-distinctive marks are not eligible for trademark protection because they contain words that merely describe the goods or services.
Marks that bear no relation to the underlying goods or services are inherently distinctive. For example, the word KODAK has no meaning with respect to photography products. The same goes for STARBUCKS and CLOROX. They’re made up words that have nothing to do with coffee or bleach.
Whereas marks that actually describe a feature, or quality, or ingredient of the underlying goods or services are not distinct and cannot initially receive trademark protection. Consider this …
At one time, the mark HEALTHY CHOICE was considered descriptive for nutritious frozen meals. But over time, primarily through extensive marketing efforts and high sales, the mark became much more than a descriptive term. Consumers came to view it as a brand name they recognized and trust. When an originally descriptive mark comes to have a “second meaning” as a brand name in the marketplace, it will have acquired trademark distinctiveness and become legally protectable. Now, customers understand the difference between HEALTH CHOICE as the name of a line of frozen food products and the directive to “make a healthy choice” as an admonition to ditch the cookies.
2. Commercial Use
Finally, trademarks cannot receive legal protection unless and until they are used in commerce.
In fact, trademark rights actually come from using the mark in commerce. Commercial use requires placement of a mark directly on products or their packaging (or in association with services or in the advertising of services) and offering them for sale or distribution to the public. If a trademark isn’t used in the offering of goods/services in the marketplace, it does not and cannot receive legal protection.
The Bottom Line
A trademark is a word, symbol, or combination used to identify the unique source of goods. It can only be protected by law if it is unique, distinctive, AND in commercial use.
