Trademarks are everywhere and you might not even know it!
Trademarks are a form of intellectual property. Like patents, copyrights, and know-how, trademarks can be licensed, sold, donated, litigated, and abandoned. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services. It is more common to use the terminology and symbol, Trademark (™), rather than the term service mark or sm. A trademark does not prevent others from producing similar goods or services.
- Legal Protection
- Elements to a Trademark
- Trademark Rights and Registration
- Trademark Infringement
- When to use the TM symbol v. the ®
- Using Symbols in Writing
- Additional Reasons to Use Proper Marking for Your Trademark
Federal and state laws govern Trademarks. Under the Lanham Act, trademarks can have federal protection if the trademark has gained a registration from the U.S. Patent and Trademark Office. (15 U.S.C. Sec. 1051). One may still have common law or state law rights in ones trademark if registration is not sought. State laws differ on the level of protection available.
A trademark must be distinctive in order to make it capable of identifying the source of a good or service. There are four distinctive categories when it comes to review of a trademark:
1) Arbitrary and fanciful
An arbitrary or fanciful mark is a mark that bears no logical relationship to the underlying product. For example, the words "Exxon,” “Kodak,” and “Apple” bear no inherent relationship to their underlying products. Similarly, the Nike "swoosh" bears no inherent relationship to athletic shoes. Arbitrary or fanciful marks are inherently distinctive -- i.e. capable of identifying an underlying product -- and are given a high degree of protection.
A suggestive mark is a mark that evokes or suggests a characteristic of the underlying good. For example, the word “Coppertone” is suggestive of sun-tan lotion, but does not specifically describe the underlying product. Some exercise of imagination is needed to associate the word with the underlying product. At the same time, however, the word is not totally unrelated to the underlying product. Like arbitrary or fanciful marks, suggestive marks are inherently distinctive and are given a high degree of protection.
A descriptive mark is a mark that directly describes, rather than suggests, a characteristic or quality of the underlying product (e.g. its color, odor, function, dimensions, or ingredients). For example, "Holiday Inn," "All Brand" and "Vision Center" all describe some aspect of the underlying product or service (respectively, hotel rooms, breakfast cereal, optical services). They tell us something about the product. Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have acquired "secondary meaning." Descriptive marks must clear this additional hurdle because they are terms that are useful for describing the underlying product, and giving a particular manufacturer the exclusive right to use the term could confer an unfair advantage. A descriptive mark acquires secondary meaning when the consuming public primarily associates that mark with a particular producer, rather than the underlying product. Thus, for example, the term "Holiday Inn" has acquired secondary meaning because the consuming public associates that term with a particular provider of hotel services, and not with hotel services in general. The public need not be able to identify the specific producer; only that the product or service comes from a single producer. When trying to determine whether a given term has acquired secondary meaning, courts will often look to the following factors: (1) the amount and manner of advertising; (2) the volume of sales; (3) the length and manner of the term's use; (4) results of consumer surveys. 
Finally, a generic mark is a mark that describes the general category to which the underlying product belongs. For example, the term "Computer" is a generic term for computer equipment. Generic marks are entitled to no protection under trademark law. Thus, a manufacturer selling "Computer" brand computers (or "Apple" brand apples, etc.) would have no exclusive right to use that term with respect to that product. Generic terms are not protected by trademark law because they are simply too useful for identifying a particular product. Giving a single manufacturer control over use of the term would give that manufacturer too great a competitive advantage. Under some circumstances, terms that are not originally generic can become generic over time, and thus become unprotected.
Trademark rights can be acquired in one of two ways. The first is by being the first to use the trademark in commerce. The second is being the first to gain registration of the mark with the U.S. Patent and Trademark Office (“USPTO”).
“Use” in relation to trademark law is a technical term, meaning in order for a trademark to be in “use” the good or service that the trademark represents must actually be offered for sale to the public. If you are interested in gaining rights in a trademark and have a plan to sell or offer a good or service in connection with a particular trademark there is a way to gain priority to the make by filing an intent to use trademark application with the USPTO.
Federal registration is not required to gain rights in a trademark, however it is recommended to gain certain benefits. An owner of a registered trademark gives the owner the right to use the mark nationwide and it is constructive notice to others that the party owns the trademark. Additionally, in order to bring a lawsuit in federal court for infringement, the party claiming infringement must have a federal registration.
If a party owns the rights to a particular trademark, that party can sue subsequent parties for trademark infringement using the “likelihood of confusion” standard. To be more specific, the use of a trademark in connection with the sale of a good or service constitutes infringement if it is likely to cause consumer confusion as to the source of those goods. Courts typically look at a number of factors when a likelihood of confusion claim is raised, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant's intent.
So, for example, the use of an identical mark on the same product would clearly constitute infringement. If I manufacture and sell computers using the mark "Dell," my use of that mark will likely cause confusion among consumers, since they may be misled into thinking that the computers are made by Dell Computer, Inc. Using a very similar mark on the same product may also give rise to a claim of infringement, if the marks are close enough in sound, appearance, or meaning so as to cause confusion. On the other end of the spectrum, using the same term on a completely unrelated product will not likely give rise to an infringement claim.
It is vital for trademark owners to know when to use the ™ and when to use the ® symbols in connection with the mark and the goods and/or services. As soon as a trademark owner has identified a mark that is distinct for their goods and/or services, they can use the TM symbol to identify a trademark or service mark. It is not necessary to file paperwork with the state or federal government in order to use this form of marking. The use of the TM symbol is important because it puts potential competitors on notice that the trademark owner is using the mark as trademark for its goods and/or services. Additionally, use of the TM symbol can offer marketing appeal to consumers because many recognize the TM to symbolize a brand designation rather than a fly-by-night good or service.
The ® symbol may only be used after the U.S. Patent and Trademark Office (“USPTO”) has granted Federal registration. This symbol is used for both trademarks and service marks, identifying that the mark is federally protected. It is important to note that this symbol should not be used during the application process, but only after a Federal certificate is issued to the trademark or service mark owner. A trademark owner can only gain federal registration of one’s mark after the mark has been used in interstate commerce, which can include selling the product or good across state lines or providing services in a different state other than the trademark owner’s home state. Offering or selling goods and/or services via the internet, in some cases, may constitute use in interstate commerce.
Please contact UNHInnovation for information on how to use the TM or ® symbol in connection with your trademark or service mark.
Use the TM or ® symbol when using the trademark in a way that is connected with marketing the good and/or service. When a trademark appears multiple times in the same document, use the TM or ® symbol at the top of the document but it’s not necessary to use the symbols at every instance. Most word processing programs allow you to insert either the TM or registered symbol under the “insert symbol” function or “special character” function. It is important to always use the TM or registered symbol (if registration has been granted by the USPTO) when using your trademark in any type of written work at least once. Where one has a new trademark my inclination is to use the appropriate signage a bit more liberally in order to help get the general public to associate the trademark as the brand.
With regards to both advertisements and everyday language, whether it is a publication, poster, business meeting with potential investors or with potential clients, treat your trademark as an adjective and NOT a noun. This may sound awkward and take some getting used to; however, it tells others that the adjective you’re using is actually your trademark for a good or service and not the actual good or service.
For example: The University of New Hampshire owns the registered trademark UNHCEMS® for software. A proper way to use this mark is as follows: The University of New Hampshire would like to offer the UNHCEMS® software for all your chemical safety and compliance needs.
- It shows potential consumers and competitors that you put value in your Trademark.
- It may strengthen your marketing efforts by identifying the source of origin of the good or service you are offering.
- It may prevent others from registering the mark for themselves.
- Assist in managing counterfeiting goods.
- Offers future control of domain names and uses of the mark in advertisements.
Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983)
15 U.S.C. Sec. 1114, 1125
 Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961)