Trademark rights arise in one of two ways: either by filing a mark with the US Patent and Trademark Office based on a bona fide intent to make use of the mark on a product or in association with a service that will soon be offered to the public, or by actually using the mark in commerce on a product or in association with a service.
Under the federal law, an application for registration may be filed based on actual use of the mark or a bona fide intent to use the mark in commerce. The filing date of an application with the United States Patent and Trademark Office to register a trademark or service mark which the applicant intends to use on a product or in association with a service establishes a date of constructive use of the mark. The act of filing the application, therefore, through constructive use, can create a nationwide priority of rights in the mark against any other person who subsequently adopts the same or a confusingly similar mark. The intent to use the mark must be a bona fide intention or the application may be invalid and the applicant may be subject to certain penalties for filing a fraudulent claim of intent. The constructive use provided by the filing of the application claiming an intent to use the mark is contingent upon the mark ultimately issuing as a federal registration. The federal registration will be issued only after the applicant has made actual use of the mark on the goods or in association with the service that it claims to have intent to use when the filing takes place. Actual use of the mark must be made within six months of the time that the Trademark Office issues a notice of allowance of the mark after the application has been filed, although that period may be extended up to thirty months in appropriate circumstances. When use is made and the federal registration issues, the owner's rights in the mark are superior to all who have adopted the same or a similar mark for the same or a similar product or service subsequent to the filing date of the owner's application.
Obtaining a federal registration based on the bona fide intent to use the mark or based on the actual use of the mark provides significant advantages. Among these advantages are the following:
Those who make use of trademarks or service marks without filing for federal registration can obtain exclusive rights in those marks in the market in which the marks are used, if the use is prior to the filing date of any federal registrant or any other user in that market of a confusingly similar mark. This market may be small, i.e., a town or part of a town, or large, i.e., the entire United States. A wider area, referred to as the "zone of natural expansion," may also be granted to the prior user if it can be shown that there were plans to expand before a junior user entered the market.
An application for a federal registration of a trademark or service mark filed in the United States Patent and Trademark Office is examined by government attorneys to ensure that the mark is not likely, when used on or in connection with the goods or services of the applicant, to cause confusion, or to cause mistake, or to deceive the consuming public that the goods or services bearing the mark have the same source, origin or approval as those sold under a previously registered mark which has not been abandoned or canceled. The Examiner also makes a determination that the mark is not inherently incapable of performing the identification function of a mark because, for example, it is the generic word for the product or service with which it is used or because it is descriptive of the products or service with which it is used.
Federal trademark registrations are valid for ten years and can be renewed for like periods, provided the mark is constantly used. Failure to use a mark can cause the rights in the mark to be lost. Such abandonment of the mark causes the mark to lose its significance to the public as an identification of a single source and a standard of quality.
Trademarks come in four varieties: 1. Descriptive, 2. Suggestive, 3. Arbitrary and 4. Fanciful. Each has its particular advantages and disadvantages with regard to trademark protection and ease of marketing.
Descriptive marks are the easiest to market but the hardest to register. A descriptive mark is one that says exactly what the product is. In general, any mark that describes a quality, characteristic, ingredient, purpose, function, etc. of the product or service is descriptive. Other descriptive marks can be geographic, laudatory or personal surname words. All of these are considered weak marks. The USPTO feels that a product description is not a mark because it describes all other competing products too.
Please note, however, a descriptive mark can be registered if the mark through continuous and substantial use has acquired distinctiveness through consumer recognition or "secondary meaning."
Suggestive marks are a bit easier to register and a bit harder to market. If information about the product or service given by the mark is indirect or vague, then this indicates that the mark being used is "suggestive." An example would be "Bravo®." While this mark does not explicitly describe what the underlying goods or services are, it hints at it. You may suspect that it has something to do with the performing arts, but you don't know if the mark is for a channel, a theater or a magazine. A name like this requires a leap of imagination and necessitates a little education to explain to consumers what it is. Sometimes a sub-title helps, as in "Bravo-the culture channel." Since the word is suggestive you have a better chance of getting it on the Principal Register than if it was an exact description. Other examples of suggestive marks are Greyhound® for buses and Sunkist® for oranges.
Arbitrary marks are common English words that are used in a way that their normal meaning has nothing at all to do with the product or service. They are relatively easy to register and relatively hard to market. (See how there is an inverse relationship between trademarks and marketing? The easier it is to register the trademark, the harder it is to tell consumers what the product is. And the easier it is to market it, the harder it is to prove the trademark is unique.) "Nickelodeon®" is an example of an Arbitrary mark. It's a fun, silly-sounding word but the actual meaning is "a five-cent movie theater," which doesn't have anything to do with children or cable television or green slime. But, it has been so well-marketed that now "Nickelodeon" means "kids." This required much effort and many dollars in advertising to establish. But once established, the mark became very valuable property. In other words, the more money invested in giving meaning to an Arbitrary mark, the more value it has in the long run.
Arbitrary marks are easy to register because the words have no connection to the product. A five-cent movie theater might have a hard time registering "Nickelodeon," but not a TV network. "Apple® Computers" is another good example. Since apples and computers have no connection, it is a strong, defensible mark that has gained recognition value with consumers over the years. A fruit company named "Apple" would have a very tough time.
The final category is Fanciful, which is the easiest to register and the hardest to market. Fanciful marks are coined words that never existed before. They do not exist in any dictionary and are completely made up. A classic example is "Oreo®." This name has nothing to do with chocolate sandwich cookies, or anything else for that matter, because somebody simply invented the word. (It exists in the dictionary only as a slang word derived from the Nabisco trademark.) The Oreo trademark is so strong it has almost become an icon. Everyone knows what an Oreo is, thanks to decades of advertising and marketing. And, the mark is un-challengeable.
