Broadly speaking, a trademark is a specific “thing” and also a set of legal rights. As a “thing,” a trademark is something in particular — like words, marks, color, a design/logo — that is used as an indication of the commercial source of goods or services. By definition, trademarks do not exist “free-floating” out there without a connection to a product or service. Thus, trademarks must be located on a product, on packaging for products or services, on or in advertising, on an instruction book, on a website page, etc. Further, other than scalability, a trademark must be used the same each time. That is, a trademark is unchangeable — if the composition of the trademark is changed, the result is to create a new trademark.

A trademark is created specifically for this identification purpose and relates to a commercial purpose. Legally, a trademark is only for commercial use. If a trademark owner stops using a trademark “in commerce,” then the trademark will lapse and lose its legal protection. In effect, this will allow a competitor to use the trademark in commerce. The word “trademark” broadly covers trademarks used for both goods and services, but the term “service mark” is often used more narrowly for trademarks related to commercial provision of services. Note further that the word “commercial” does not refer exclusively to products and services that are offered for sale. Not-for-profit organizations may provide goods and services free of charge and such would still be providing goods and services “in commerce” for purposes of creating and using trademarks.

As noted, trademarks are made from various elements. For example, trademarks can exclusively contain words or numbers which then are called word marks — that is, a trademark which is made up of letters, words, phrases, and/or numbers. In today’s marketplace, it is rare to see a trademark that has no letters, words or numbers (although there are many such as the Nike “swoosh” symbol). Another element of trademarks is design. This can include stylization of letters and words plus anything imaginable as an image. Color can also be used as an element of a trademark and, in some cases, a color itself can be the trademark (such as Owens Corning’s pink for its building construction insulation). Sounds can also be trademarked as for movie and television production companies. Sound marks are usually created — such as a few musical notes — but can also be “natural” sounds — like the “roaring lion” sound for MGM movies. Moving images can also be used as a trademark.

As long as a trademark is used in commerce, a trademark can exist indefinitely. Some trademarks have been in use for hundreds of years.

In terms of legal rights, a trademark is a protected property right. Like real property — land — trademark legal rights include the right to exclude others. That is, trademarks allow the owner to exclude others from using the trademark (or any trademark that might be “confusingly similar”). An infringement against a trademark is like a trespass to land. Trademark infringement allows the owner to sue in court for damages from that infringement.

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

The Spectrum of Trademark Distinctiveness

Not everything that someone uses as a brand identifier qualifies as a protectable trademark. Under both federal trademark law and common law, the ability to obtain trademark protection is tied to the “distinctiveness” of the proposed mark — its inherent capacity to identify the commercial source of goods or services and distinguish them from those of others. Courts apply the spectrum of distinctiveness established in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976):

• Fanciful marks — coined words with no prior meaning (KODAK, XEROX, HÄAGEN-DAZS). The strongest category; inherently distinctive and automatically protectable.
• Arbitrary marks — real words applied to unrelated goods (APPLE for computers, AMAZON for retail). Also inherently distinctive and immediately protectable.
• Suggestive marks — words that hint at a product quality without directly describing it (NETFLIX for streaming, COPPERTONE for sunscreen). Inherently distinctive and protectable.
• Descriptive marks — words that directly describe a feature, quality, or characteristic of the goods. Not inherently distinctive; protectable only upon proof of acquired distinctiveness (secondary meaning).
• Generic terms — common words for the goods or services themselves. Never protectable as trademarks.

How Trademark Rights Are Created and Maintained

In the United States, trademark rights arise from actual use in commerce — not from registration alone. A business that has been using a mark in connection with goods or services in interstate commerce has common law trademark rights in the geographic area of its use, even without federal registration. These common law rights can be enforced in litigation and can constitute a defense to later-filed federal registrations in the same geographic area.

Federal registration with the USPTO provides substantially enhanced rights, including nationwide constructive notice of the trademark, a legal presumption of ownership and validity, and access to federal courts for infringement actions. After five years of continuous use following registration, the trademark can achieve “incontestable” status under 15 U.S.C. § 1065, which largely forecloses challenges based on descriptiveness and other grounds.

Trademark rights can be lost through abandonment — discontinuing use with an intent not to resume — or through genericide, the process by which a trademark becomes the generic name for the product class. ASPIRIN, THERMOS, and ESCALATOR were once trademarks that became generic through widespread public use. GOOGLE and VELCRO have both faced genericide risks and have actively combated them through consumer education and legal enforcement.

Trademarks vs. Other Forms of Intellectual Property

A common source of confusion is the overlap and distinction between trademarks, copyrights, and patents. A trademark protects a brand identifier — a word, phrase, logo, or symbol used to identify commercial source. A copyright protects original creative expression fixed in a tangible medium — books, music, photographs, software. A patent protects inventions and functional designs. These categories can overlap: a logo can be both a trademark (source identifier) and a copyrighted work (original artistic expression). Understanding which type of IP protection applies to a particular asset is essential for building a complete intellectual property strategy.

The attorneys at Revision Legal counsel businesses at every stage of trademark development — from clearance to registration to enforcement. If you have questions about whether your mark qualifies for trademark protection or how to strengthen your trademark rights, call us at 231-714-0100 or 855-473-8474.