Let's start with the basics: a trademark is a recognizable sign, design or expression which identifies products or services of a particular source from those of others. A servicemark is the same thing as a trademark except that it distinguishes services, rather than goods. Accordingly, it is placed on items that advertise or promote services (business cards, flyers, websites, etc.). The term “trademark” is often used to refer to both trademarks and servicemarks.
So, what CAN be used as a trademark? Words, short phrases, and graphical signs (logos) are the most common forms of trademarks, but did you know shapes (think the Coca-Cola bottle) and colors can also qualify for trademark protection? Trademark protection is all about source identification and cutting down on consumer confusion. A product or container shape can also serve a source identifying function and therefore can be an enforceable trademark.
Let's get into some of the requirements, or prerequisites, for trademark protection. Keep in mind, trademarks are all about consumer protection and identification. Therefore, a mark must be distinctive -- meaning, it must be capable of identifying the source of a particular good or service. There are four categories of marks courts use to determine distinctiveness, all based on the relationship between the mark and the underlying product: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic.
An ARBITRARY or FANCIFUL mark is a mark that bears no logical relationship to the underlying product. A couple of big ones that come to mind are APPLE (arbitrary) and GOOGLE (fanciful). Arbitrary or fanciful marks are inherently distinctive and are given a high degree of protection.
SUGGESTIVE marks are marks that evoke or suggest a characteristic of the underlying good--think Jaguar and Mustang for cars, Greyhound for the bus line, and Playboy for the men's magazine (and trust us, don't mess with the Playboy mark. Just about every other case in trademark law is about Playboy's lawyers protecting their bunnies). These marks are SUGGESTIVE and not descriptive because all require an additional leap in the minds of consumers when determining what goods or services might be associated with that mark.
DESCRIPTIVE marks directly describe, rather than suggest, a characteristic or quality of the underlying product. Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have acquired "secondary meaning." A descriptive mark acquires secondary meaning when the consuming public primarily associates that mark with a particular producer, rather than the underlying product. Otherwise, giving a particular manufacturer the exclusive right to use the descriptive mark would be unfair. Think Holiday Inn, Bank of America, Jiffy Lube--all, though descriptive, are associated with a particular source.
A GENERIC mark is a mark that describes the general category to which the underlying product belongs. "Cereal" for breakfast cereal, for instance. Generic marks are afforded NO protection in trademark law. Why? They are just too useful for identifying a particular product. But be careful of your mark becoming TOO successful--if your mark becomes the word the general public uses to describe all brands of that product/service, your mark may be on the verge of committing GENERICIDE. This is why some mark owners vigorously defend their marks--XEROX had a great campaign a few years ago to combat the genericide of its mark "When you use XEROX like you use aspirin, it gives us a headache." Yes, folks, ASPIRIN was originally a trademark of the Bayer Corporation! RIP, ASPIRIN, CELLOPHANE, ELEVATOR, THERMOS, AND ZIPPER (and many more).
How do you acquire rights in a mark? Generally, trademark rights arise in the United States from use of a mark in commerce, in connection with a good or service. There are three ways to secure one's right in a trademark (1) using the mark in commerce in connection with a good or service, referred to as common law rights; (2) registering the trademark in one's state--this only gives you protection statewide; or (3) registering the trademark with the United States Patent and Trademark Office--this gives you protect nationwide.
The other way to acquire priority is to register the mark with the USPTO with a bona fide intention to use the mark in commerce. Traditionally, common law rights in a trademark are limited to the geographic area in which one actually uses the mark, but in some cases, if one can establish a nationwide presence (such as using the mark online and reaching a nationwide audience) a presumption of national rights in the mark *may* arise.
One of the first things you need to do prior to filing an application for trademark protection is perform a thorough SEARCH of the USPTO database to make sure there are no confusingly similar marks to yours already registered. The USPTO can REJECT a trademark application on the following grounds:
1. The USPTO will refuse to register generic marks or descriptive marks that have not attained secondary meaning; 2. The USPTO can also reject "immoral or scandalous" marks;
3. Certain geographic marks;
4. Marks that are primarily surnames; and
5. Marks that are likely to cause confusion with existing marks.
Rejection of your mark by the USPTO does not necessarily mean that it is not entitled to trademark protection; it means only that the mark is not entitled to the additional benefits of federal registration. You may still be entitled to some common law rights, or state rights, in your trademark.
We've talked about the formalities and legalities--but how does trademark law help you SUCCEED? Your trademark, logo, or servicemark allows you to distinguish yourself in the marketplace. That's why all successful businesses trademark their brands! Remember the "Pepsi Challenge"? Would you REALLY know the difference between Coke and Pepsi if you didn't grow up with the two labels? Because of the different trademarks, people notice a subtle difference between cola beverages. And that is how the artist can grow with a trademark: show your customers your work is slightly different, and allow yourself to sell in the same marketplace as other artists working in the same medium!