Trade Mark

Trademark, Service mark: is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods or a service of one party from those of others.

The term “trademark” is often used to refer to both trademarks and service marks. Terms such as "mark", "brand" and "logo" are sometimes used interchangeably with "trademark".

The United States recognizes common law trademark rights, which means action can be taken to protect a trademark that is in use but not registered. Thus these rights are limited to the geographic area in which the mark is used. However, to obtain the greatest protection for a mark, it is almost always advisable to register the mark, either with the federal government, if possible, or with a state government. A mark which is registered with federal government should be marked with the ® symbol (registered trademark). Unregistered trademarks should be marked with a "TM", while unregistered service marks should be marked with a "SM".

Ability to register:

Two basic requirements must be met for a mark to be eligible for trademark protection:

1- it must be in use in commerce: The Lanham Act defines a trademark as a mark used in commerce, or registered with a bona fide intent to use it in commerce. If a mark is not in use in commerce at the time the application for registration is filed, registration may still be permitted if the applicant establishes, in writing, a good faith intent to use the mark in commerce at a future date.

2- it must be distinctive: The capacity for identifying and distinguishing particular goods.

Trademarks are traditionally divided into four categories of distinctiveness: (The spectrum of distinctiveness):

1- fanciful marks / inherently distinctive mark: have been invented for the sole purpose of functioning as a trademark and have no other meaning than acting as a mark. Examples: EXXON, KODAK, XEROX.

2- arbitrary marks: a common word which that has a dictionary meaning but has no relation to the goods or services being sold. Examples: APPLE (for computers), LOTUS (for software), SUN (for computers).

3- suggestive marks: suggest the nature, quality, or a characteristic of the products or services, but does not describe this characteristic, and requires imagination on the part of the consumer to identify the characteristic. Examples: MICROSOFT (suggestive of software for microcomputers), NETSCAPE (suggestive of software which allows traversing the "landscape" of the Internet), SILICON GRAPHICS (suggestive of graphic oriented computers).

4- descriptive marks: a term with a dictionary meaning which is used in connection with products or services directly related to that meaning without imagination. Lektronic was famously refused protection by the USPTO on ground of being descriptive for electronic goods.

However, it is possible for descriptive marks to "become distinctive" by achieving secondary meaning. Secondary meaning indicates that consumers recognize the mark as having a source indicating function. Secondary meaning can be achieved through long term use, or large amounts of advertising and publicity. The acquisition of secondary meaning is often proven through the use of

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