What are trademarks, exactly?

Trademarks are words, symbols, colors, phrases, designs, sounds or any combinations of these things which are used to identify the source of goods or services, and to distinguish the goods and services of one seller from those sold by others. A trademark conveys an expectation of a certain quality of the goods or services produced by that source. A good example is the brand burnt onto cattle by a cowboy to mark the cattle came from a particular ranch.

A source identifier must be “distinctive” in order to qualify as a trademark, meaning that its purpose must be to identify and distinguish the source, as opposed to describing the product. For example, the word “banana” would not be distinctive for selling bananas, because it describes the product as opposed to identifying its source. However, “Chiquita” is distinctive for selling bananas, as in “Chiquita Bananas,” because it identifies bananas which are sold by the Chiquita Company. Trademark law has a spectrum of distinctiveness, from the most distinctive (which receives the strongest trademark protection) down to no distinctiveness (which receives no trademark protection): inherently distinctive or fanciful (for instance, “Kodak”, a term that was made up to identify the product source) or arbitrary (for instance, “Apple” for selling computers); suggestive (for instance, “Grameen,” which means rural, for banking services for impoverished villagers in Bangladesh); descriptive (for instance, “Daily News” for newspapers), and finally generic, which applies to terms that have no distinctiveness and cannot serve as a trademarks (i.e., “banana” for bananas, “chair” for chairs, etc.).

Similar to copyrights, while it is not necessary to register a trademark, registration will provide several important, sometimes even critical rights. For example, the first to register is generally entitled to the trademark. Registration is completed by submitting an application to the United States Patent and Trademark Office including the trademark and specifying the goods or services with which it is associated (for example, Coca-Cola for soft drinks). If there is no prior and confusingly similar mark, the registration is granted and will last for 10 years, but can be renewed, in theory, forever.

Infringement by confusing customers

A trademark owner can prevent others from using confusingly similar marks in connection with similar products (such as the case involving the “Mixed Chicks” hair products for women of color). Indeed, registering a brand name as a trademark can provide a valuable business asset to both startups and major corporations alike. The issue of counterfeit goods provides a good example: same mark, same product, but false source, such as the fake “Rolex” watches sold on many street corners; unwary consumers recognize the brand name and are deceived into believing that they are purchasing the genuine article. In a trademark infringement suit, the key issue considered by the court is whether it is likely that consumers will be confused if the defendant is allowed to use the same or a similar mark. To defend against a trademark infringement claim a defendant can argue that her mark is not confusingly similar to that of the trademark owner. Owners of famous trademarks can also prevent others from “diluting” their marks, by using them on other goods, even if there is no confusion. Injunctive relief (a court order to stop using the trademark) is a common remedy for trademark infringement.

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