Trademark Law and Practice
Trademarks are source indicators that protect words, phrases, and symbols by preventing others from using marks that could confuse consumers and result in unfair competition.
Trademarks must be:
- Used in commerce continuously based on the standards in that industry
- Priority (Used before someone else did)
- Distinctive (Associated with the brand)
- Used as a mark (Source indicator; not a functional aspect of the product)
Trademarks can be protected three ways:
- Common law
- State registry
- Constructive notice in-state
- Prima facie evidence of a valid trademark
- Federal registry
- Commerce must be interstate or international
- Principal register
- Supplemental register
- Allows descriptive marks without distinctiveness to be registered.
- Does not give actual enforcement rights
- Helps to establish evidence of the mark's age and exclusive use federally for proving that it acquired distinctiveness—allowing registration on the Principal Register. Five years of substantially exclusive and continuous use in commerce can be accepted as prima facie evidence of acquired distinctiveness.
Trademarks last indefinitely as long as they remain used.
There are five classes of terms in regards to trademark protection. In order of ascending protection, they are:
- This means that it is "merely descriptive" and has no inherent distinctive character.
- Descriptive marks can acquire a distinctiveness by acquiring a secondary meaning associating the mark with the product.
- Five years of substantially exclusive and continuous use in commerce is evidence that can establish acquired distinctiveness and can be accepted as prima facie evidence of such.
- Related names, geography, etc. are always descriptive.
- Examples include Reese's, Nike, Arizona Iced Tea, Shredded Wheat, and Zatarain's Fish-Fri.
Fanciful, arbitrary, and suggestive are inherently distinctive.
Marks can shift between classes as language changes. If they become the generic name of an article or substance, the trademark can be cancelled.
Trademarks generally have to be on the product they are associated with.