Protecting Your Trademark

The Protection of a Trademark

According to the trademark laws in the U.S, the owner of a trademark must use the mark for his or her services and goods in order to enjoy trademark rights. If the owner fails to do so, there are great chances that the rights might be lost. Therefore, the first step in protecting your trademark after it has been registered is to use it frequently to represent your brand. Furthermore, it is your responsibility to police the mark and to protect it from infringement. If you find that your rights are being contravened, you must take immediate legal action against the offender. To do so, you will benefit greatly from the assistance of an experienced trademark counsel such as those available at Trademark Counsels.

What Is the Scope of Protection of a Trademark?

Different kinds of trademarks are afforded different degrees of protection under the U.S trademark laws. Some marks are considered weak and provided little protection, whereas strong marks have broader legal rights. Based on their strength and the degree or scope of protection they can be given, marks can be classified into five major types.

1. Arbitrary Marks: When common terms are used as marks for a brand that is unrelated to the dictionary meaning of the term, it is called an arbitrary mark. The term might have a number of meanings but none of them are associated with the brand in an obvious way. Such marks make for strong trademarks as they have inherent distinctiveness. For example, the marks Apple, Camel, and Shell for computers, cigarettes, and gas stations, respectively are arbitrary.

2. Coined Marks: These marks either are invented words or consist of multiple made-up words that have no formal definition in any dictionary. They are the strongest among all kinds of marks; it is the easiest to protect the trademark rights for such marks. For example, Exxon, Google, and Rolex are coined marks for an oil corporation, a web browser, and a watch company, respectively.

3. Descriptive Marks: These are the marks that consist of merely descriptive terms that are not inherently distinct. These terms might describe some feature, function, or other aspect of the goods. Such marks can only be registered when they have gained secondary meaning (also called acquired distinctiveness). It refers to the association of a descriptive term with a specific source as viewed by the consumers. Secondary meaning is developed when a mark is used for a long period in connection with the sales and advertising of a specific brand. They are usually weak marks. For example, Coca-Cola is a descriptive mark for cola containing extract from coca leaves, and Quik Print for fast printing services.

4. Marks with Generic Terms: These marks are made of generic, common, and non-distinctive words that cannot be protected under trademark laws. Generic marks are unregistrable because registering generic terms would restrict their use by other brands to describe their products. This would ultimately affect competition in the industry. For example, the marks Shoes for a shoe store and Bakery for a bakery are generic and unregistrable.

5. Suggestive Marks: These marks give a hint about some attribute of the product, but unlike descriptive marks, you need to arrive at the conclusion yourself by using your imagination, thought, or reasoning. They are weaker than arbitrary and coined marks in terms of legal protection. For example, Netflix and Coppertone are suggestive marks for an online streaming service and a sunscreen, respectively.

If you are wondering in which of the aforementioned categories your mark fits best or are finding it difficult to apply for trademark registration alone, consider hiring one of our professionals at Trademark Counsels to streamline the process for you. You can contact us for a courtesy consultation, and we will try our best to answer all your questions about the application process.