Crash course on trademarks: What are trademarks

A trademark must inform potential buyers about the trademarked goods and services. This can be the company that made it, but also a characteristic of the good itself. Companies have a wide variety of options to achieve this, from words and logos to shapes and colors and in some cases even sounds. The most important requirement is that a trademark is distinctive. A purely descriptive name cannot help buyers to identify the origin of the goods, and so it can not be a valid trademark.

What kind of trademarks exist

Trademarks and service marks

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Historically, many trademark laws only provided protection from marks regarding products and not services. Later, when protection for the source of services became more important, trademark law was extended to allow for this. In most cases, the distinction between the two is not important. Trademark lawyers and scholars still use the term 'goods and services' out of habit to indicate that trademarks can cover both.

Collective marks

Collective marks indicate the origin of goods and services just like "ordinary" trademarks. However, as the name suggests, they indicate that the origin is a member of an association rather than one particular company. This way, the members of the association can jointly profit from the image created by the collective mark. Consumers then also know that a company bearing the collective mark meets the standards set by the association.

For example, the term "realtor" could be a collective mark by a national association of realtors, which means that it may only be used by real estate agents who are members of that association. The association could set certain standards for e.g. the price, or offer guarantees regarding the service offered or act as a mediator in case of conflict. Non-members cannot use the term "realtor" to designate their services, and so potential customers are warned that these companies do not necessarily meet the standards set by the association.

Certification marks

Certification marks are somewhat similar to collective marks. Certification marks do not indicate the origin of the goods, but certain characteristics of the good. For example, a certification mark could indicate that a particular product is 100% silk, or that it was developed without animal testing. Many consumer electronic products in Europe, for example, bear the "CE" mark, which indicates that the product meets the safety standards set by various European Directives. The letters "CE" are an abbreviation of ConformitÚ EuropeÚnne, which is French for European Conformity.

Typically, a certification mark is held by an independent body, which also maintains the standards that a product or service must meet in order to be allowed to bear the certification mark. This body should not commercially use the certification mark itself, as this would give this body an unfair advantage.

What can be used as a trademark

Words and graphical signs

The most common forms of trademarks are word marks and graphical marks. A word or phrase, whether made-up or already existing, can be used as a trademark. A graphical sign, often a logo, can also be a trademark. It is often easier to get trademark protection for a graphical sign containing that word than for the word itself. The graphical "dressing" of the sign helps make it more distinctive. A word must be able to qualify as trademark without any such "dressing". Of course, if someone has trademarked a graphical sign containing a descriptive word, that doesn't mean that he has any rights to the descriptive words. He can only act against people using that graphical sign.

Shapes and colors

Next to words and graphical signs, the shape of a product can also be a trademark. The most famous shape mark is of course the Coca Cola bottle. Shape marks can be more valuable than word marks, as consumers are often able to recognize a shape even when the label has been removed. Colors can, under certain circumstances, also qualify as a trademark. Typically, such colors are then part of the house style of a particular company.

Sounds

Sounds are usually not able to qualify as a trademark. The main reason for this appears to be administrative: sounds, unlike text or graphics, cannot be easily added to the registration database, making it very difficult to find out whether a particular sound would be trademarked.

In the United States, sounds can be a trademark. A famous example is the roar of the lion from the MGM movie company. Harley-Davidson applied for a trademark on the distinctive sound made by its motorcycles (potato-potato-potato), but this application (serial number 74485223) was abandoned after a decision by the Trademarks Trial and Appeals Board in September 2000.

Of course a distinctive and original sound can be protected by copyright. This would allow the company that held the copyright on the sound to prevent others from using that sound in their commercials. It wouldn't help against competitors who independently compose a similar sound, though.

Distinctiveness: when does something qualify as a trademark

The most important requirement is that a trademark is distinctive: the trademark must be able to identify the goods or services it protects as originating from a particular company, and thus to distinguish those goods or services from those of other companies. This is important in order to ensure that potential buyers are not tricked into buying a product of one company while believing it is a product of another company.

When is a trademark distinctive

A trademark can be distinctive simply because it is a very original or fantasy name (such as XYYZ) or because of the effort by the trademark holder to build up such a distinctiveness. Even when the trademark is a common word, it can still be distinctive for a particular good or service. For example, even though "Apple" is a common English word, it was successfully trademarked for computers and related products. It was also trademarked (by another company) for a particular record label. The computer company and the record label later made an agreement that the computer company would not market music software under the name "Apple" or using the "Apple" logo. Interestingly, MacOS comes with a System Sound named "sosume". More recently the Apple computer company has started an electronic music store, which prompted a trademark lawsuit from the Apple Music company.

Distinctiveness may vary in time

The distinctiveness of a trademark may increase or decrease over the years. If a particular trademark is used very intensively by the trademark holder, it becomes more famous and thus more easily identifiable by consumers. But if the trademark holder is not very careful, the trademark may end up as a generic name for the product to which it relates. This destroys all trademark rights the trademark holder has, and so it should be no surprise that many trademark holders actively try to prevent people from using trademark names as generic names.

Distinctiveness applies to the trademark as a whole

The distinctiveness of a trademark relates to the trademark as a whole, not to its individual components. Article 6quinquies of the Paris Convention says that something cannot be a trademark if it is devoid of any distinctive character or consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production, or have become customary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed.

For instance, the words "baby" and "dry" are by themselves descriptive when used for diapers. The word "baby" indicates for whom the product is intended, and the word "dry" describes the intended purpose of the diapers. However, when put together the combination "Baby Dry" can be a trademark, as the combination forms an unusual juxtaposition that creates distinctiveness. The combination then doesn't exclusively consist of signs that describe intended purpose or use. This doesn't mean that others can no longer put the word "baby" or the word "dry" on the packaging of their diapers, they just can't sell diapers called "Baby Dry."

Degrees of distinctiveness

The distinctiveness of a trademark is relative to the goods and services for which it was registered. A trademark can be an ordinary word in itself, but that does not automatically mean it is not a distinctive trademark. Trademark lawyers use four different categories to indicate the distinctiveness of a trademark: fanciful marks, arbitrary marks, suggestive marks and descriptive marks.

Fanciful marks

Fanciful marks are composed of one or more fanciful or arbitrarily chosen words like "Xerox«" or "Persil«". Such made up words can be distinctive trademarks for any type of goods or service. While very fanciful names are very powerful as trademarks, it is difficult to enter a market with a completely arbitrary name. Potential buyers want to know what the product is because they can't tell from the name. Marketing people therefore prefer to have more or less descriptive names like "104 keys" or "Super Typing" for a keyboard, rather than "XYYZ". Such descriptive names are not very strong trademarks.

Arbitrary marks

Arbitrary marks are not original words, but they are distinctive because they are not related to the goods or services it designates. The word "Apple" can be used as a mark for computers or music records, but not for apples or fruit in general. It is clear that this word completely describes the goods in case of apples, and so it cannot distinguish between goods from different companies.

Suggestive marks

Suggestive marks are signs like "Microsoft" or "Silicon Graphics". These marks are suggestive of the goods they stand for, but they do not directly describe these goods. This allows them to serve as trademarks for those goods. Such suggestive marks are very attractive in marketing terms, as they remind consumers of the product and the (hopefully positive) image of the product they associate with it. And that will stimulate them to buy the product.

Descriptive marks

Descriptive trademarks are marks that directly describe the characteristics of goods or services, like "104 keys" for a computer keyboard. Such trademarks are very weak in terms of protection that they offer, and they run the greatest risk that they are deemed generic and hence cannot serve as a trademark.

The line between suggestive marks and descriptive marks is very hard to draw. a rough guideline is that suggestive marks require some imagination, thought, or perception to reach a conclusion regarding the nature of the goods.

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