A trademark is any word, symbol, or other device used to distinguish a business’ products or services from those provided by others.
Trademarks are governed by both state and federal law. The Trademark Act of 1946 (15 USC 1051, et. seq.), also known as the “Lanham Act,” is the operative federal statute. On a state level, trademarks are governed by each state’s trademark, unfair competition, and deceptive trade practices statutes. The operative statutes in Illinois are the Trademark Registration and Protection Act (765 ILCS 1036/1, et. seq.), the Counterfeit Trademark Act (765 ILCS 1040/0.01, et. seq.), and the Consumer Fraud and Deceptive Practices Act (815 ILCS 505/1, et. seq.)
Brand names, logos, and trade dress (meaning the appearance of a product), are all protectable through trademark. In order to be protectable, a word or logo must be “distinctive,” meaning that the mark distinguishes the owner’s goods or services from the owner’s competitors. Trade dress is protectable when it is both distinctive and non-functional.
Word and logo trademarks are categorized based on how distinctive their content is. Whether the mark is distinctive enough to be protectable depends on which category the mark falls into:
Coined, fanciful arbitrary words are generally distinctive enough to be protectable. Suggestive words may be protectable based on the situation.
Descriptive words, on the other hand are not protectable unless the owner uses them in the marketplace significantly enough to obtain a secondary meaning, such that the public thinks of the owner of the mark, not the product itself, when seeing the descriptive word. Surnames are treated like descriptive marks, such that secondary meaning must be established before the surname will be protectable as a trademark.
Domain names may be protected if they appear prominently in advertising or on the website itself.
Before you begin branding your business and using a word or logo, you should work with an attorney to determine the availability of the trademark in question. The last thing you want to do is spend time and money establishing a brand only to find out that someone else holds the trademark.
Your attorney should review federal registrations and applications, state registrations, trade directories, and publicly available business records to ensure that the mark you want to use has not been previously applied for, registered, or used in business. A database of federal registrations and applications can be found at www.uspto.gov.
The first person to do one of the following has the right to a trademark:
A prior user of a mark who has not filed a trademark application will have superior rights to the mark over someone who subsequently files a trademark application, at least with respect to the geographic area in which the prior user is actually using the mark. When you obtain your trademark rights through use in commerce without filing, these are called “common-law” rights. Common-law rights are limited to the geographic area in which the mark is actually used, and possibly the zone of natural expansion into which the owner is likely to extend use of the mark.
A mark is “used in commerce” with respect to goods when:
Use of ™ and ® symbols do not confer any legal rights and the use of the symbol is not required, but may be beneficial to provide notice that the words are intended as a trademark and not merely a description of the product or services in question. However the ® symbol, unlike the ™ symbol, may only be used if your mark is federally registered.
Although trademark registration is not necessary to enforce trademark rights, federal registration does confer many benefits:
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