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Kevin O'Flaherty

What is a Trademark?

A trademark is any word, symbol, or other device used to distinguish a business’ products or services from those provided by others.  Trademarks can be challenging to navigate. That is why is is always a good idea to consult with a trademark attorney when protecting your business's products.

What Law Governs Trademarks?

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.) 

What Types of Trademarks are Protectable?

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.  If you are interested in protecting other types of intellectual property learn more in our article, Copyrights Explained.

Is my Trademark Distinctive Enough to be Protectable?

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 Words are artificial words made up by the owner of the mark.  “Google” is an example of a coined word.
  • Fanciful Words, like coined words, are words that are invented by the owner for the purpose of the trademark.  However, unlike a coined word, they may resemble another word or may be a an obsolete word. “Cheez Whiz,” for example.  
  • Arbitrary Words are words that are actually used in language, but do not describe the product or service in question.  For example, “Apple Computers.”  
  • Suggestive Words do not directly describe the product, but imply a quality of the project.  For example, “Greyhound Buses” imply speed, but are not merely a description, as “Fast Buses” would be.
  • Descriptive Words simply describes a quality of the product.  An example would be “Comfy Slippers.”
  • Generic Words are simply the english word for the product.  An example would be if a television company called itself “TVs.”   

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.  

Registered symbol with gavel

How to Find Out if a Trademark is Available?

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 the United States Patent and Trademark website.

Priority of Trademark Rights

The first person to do one of the following has the right to a trademark:

  • Continuously use the mark in commerce; or
  • Apply to register the mark, followed by continuous use in commerce.

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. 

What Constitutes “Use in Commerce” of a Trademark?

A mark is “used in commerce” with respect to goods when:

  1. It is placed on the goods or their containers, displays, tags, or labels, or (when these methods are impracticable based on the nature of the good) on documents associated with the goods for their sale; and  
  2. The goods are sold or transported in commerce. A mark is “used in commerce” with respect to services when:
  • it is displayed in the sale or advertising of the service; and
  • the services are rendered.

What is the purpose of a ™ symbol or an ® symbol?

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.  

Why Should I Register My Trademark?

Although trademark registration is not necessary to enforce trademark rights, federal registration does confer many benefits:

  • A federally registered mark has nationwide priority as of the date of the application.  “Common-law trademark” rights are limited to the geographical area of actual use.  
  • Federal registration provides prima facie evidence of the registrant’s ownership of the mark, preventing litigation based on factual disputes.
  • Federal registration provides notice of the registrant’s ownership claim, which is effective whether or not competitors actually search the registry.  This eliminates the “good faith defense” for other businesses that use your mark.  
  • In some cases, such as counterfeiting, federal registration provides additional remedies, over and above “common-law” trademarks.
  • After registering the mark and using it for 5 continuous years, you have the right, upon proper filing of an affidavit, to make the trademark incontestable;
  • Federal registration provides a bar to claims of trademark dilution.  
Disclaimer: The information provided on this blog is intended for general informational purposes only and should not be construed as legal advice on any subject matter. This information is not intended to create, and receipt or viewing does not constitute an attorney-client relationship. Each individual's legal needs are unique, and these materials may not be applicable to your legal situation. Always seek the advice of a competent attorney with any questions you may have regarding a legal issue. Do not disregard professional legal advice or delay in seeking it because of something you have read on this blog.


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