What laws offer protection to trademark owners?
The basic rules for resolving disputes over who is entitled to use a trademark come from decisions by federal and state courts (the common law). These rules usually favor the business that first used the mark where the second use would be likely to cause customer confusion. A number of additional legal principles used to protect owners against improper use of their marks derive from federal statutes known collectively as the Lanham Act (Title 15 U.S.C. §§1051 to 1127). And all states have statutes that govern the use and protection of marks within the state's boundaries.
In addition to laws that specifically protect trademark owners, all states have laws that protect one business against unfair competition by another business, including the use by one business of a name already used by another business in a context that's likely to confuse customers.
What types of trademarks or service marks are entitled to the most legal protection?
As a general rule, trademark law grants the most legal protection to the owners of names, logos and other marketing devices that are distinctive -- that is, memorable because they are creative or out of the ordinary, or because they have become well known to the public through their use over time or because of a marketing blitz.
| Inherently Distinctive Marks |
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Trademarks that are unusually creative are known as inherently distinctive marks. Typically, these marks consist of:
- unique logos or symbols (such as the McDonald's Golden Arch and the IBM symbol)
- made-up words, such as Exxon or Kodak (called "coined marks")
- words that invoke imaginative images in the context of their usage, such as Double Rainbow ice cream (called "fanciful marks")
- words that are surprising or unexpected in the context of their usage, such as Time Magazine or Diesel for a bookstore (called "arbitrary marks"), and
- words that cleverly connote qualities about the product or service, such as Slenderella diet food products (called "suggestive or evocative marks").
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Which trademarks or service marks receive the least protection?
Trademarks and service marks consisting of common or ordinary words are not considered inherently distinctive and receive less protection under federal and state laws. Typical examples of trademarks using common or ordinary words are:
- people's names, such as Pete's Muffins or Smith Graphics
- geographic terms, such as Northern Dairy or Central Insect Control, and
- descriptive terms -- that is, words that attempt to literally describe the product or some characteristic of the product, such as Rapid Computers, Clarity Video Monitors or Ice Cold Ice Cream.
However, non-distinctive marks may be come distinctive through use over time or through intensive marketing efforts. And marks consisting of common terms or names may be distinctive because the words are combined into a clever phrase or slogan, such as "Taco Johns" or "Don't Leave Home Without It," or because the name itself is highly unusual, as in Orville Redenbacher's Popcorn Products.
Copyright © 2002 Nolo
DISCLAIMER: This site and any information contained herein are intended for informational purposes only and should not be construed as legal advice. Seek competent legal counsel for advice on any legal matter.
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