To create and maintain rights in a mark, it is vitally important to use the mark properly.
Marks are unique indicators of the source of goods/services. “Proper” use means presenting a mark as a source indicator, as opposed to as a company name or as a generic descriptor. Proper use also means presenting the mark prominently, consistently, and in a way that helps consumers distinguish your company’s goods/services from those of competitors. The U.S. Patent and Trademark Office (USPTO) or a court will look for proper use before accepting your company’s claim of ownership of a mark.
Moreover, proper use builds value, develops broader and stronger legal rights, and protects against the possibility that your company’s mark will lose its distinctiveness and become a generic term, in which case your company could lose its rights to the mark.
A mark that is either:
- Fanciful (Exxon for gasoline, Kodak for film, and Colgate for toothpaste);
- Arbitrary (Apple for computers, Starkist for tuna, and Dutch Boy for paint); or
- Suggestive (Greyhound for buses, Pepsi for soda, and Windex for glass cleaner;
typically is considered by the USPTO to be sufficiently distinctive, and thus can be entitled to U.S. registration upon its first use in interstate commerce.
A descriptive mark (Apple Punch for an apple juice, and Puppy Chow for dog food) of goods/services requires demonstrating established secondary meaning to gain distinctiveness sufficient to qualify for U.S. registration.
A generic mark, which is at the bottom of the distinctiveness scale, is never protectable or registrable. In fact, a generic mark is so descriptive of the goods/services as to be the common, everyday commercial name for those goods/services. In other words, essentially all competitors likely need to be able to use the generic mark to identify the generic type of good/service they’re selling. A mark can become generic through common use as a noun or verb. The list of marks that have been allowed to become generic (and thus no longer protectable) is long, but examples include Aspirin for acetylsalicylic acid, Cellophane for plastic film, Dry Ice for solidified carbon dioxide, Kerosene for light fuel oil, and Laundromat for a coin-operated laundry shop.
I have identified over 40 serious, common, and easily avoided vulnerabilities that could allow hostile licensees, crafty infringers, and blatant pirates to legally steal your company’s marks. At least half of those vulnerabilities are related to how you use your mark, regardless of whether that mark is federally registered. Contact me to learn more.