Protection is proportional to distinctiveness. Whether a trademark is a symbol or a phrase, it must be easy to recognize if it is to serve as a quick discriminator. Depending on the likely ease of recognition, courts sometimes classify trademarks into three loosely defined categories:
Distinctive trademarks: Made of a coined word or specially designed symbol, these trademarks are unique and are afforded the strongest protection under the law. Examples of distinctive trademarks are "Xerox," the silhouette of a buffalo overlaid with the interlocking letters C and U, and the musical notes G-E-C of the NBC network motto.
Suggestive trademarks: These trademarks describe a product but also hint at an origin or characteristic, typically with an unusual twist or combination of words. Examples in this fuzzy category might be "Ivory Soap," "Mister Donut," and "Wheat Thins."
Descriptive trademarks: This category is the least distinctive; "marks" are composed of common words used in a common way. To receive any protection, these merely descriptive trademarks must have acquired a secondary meaning, for example through the public's long association of the phrase with a particular merchant. "Park & Fly," "Builder's Warehouse," and "The Country's Best Yogurt," are examples.
To receive protection under state law and within the regions where a company does regular business, a merchant need only use a mark consistently and maintain control of its use. Notification to the public and other merchants that the symbol or phrase is being used as a trademark may be accomplished with the superscript symbol ®. The price for a merchant's failure to maintain control of a mark is that words or phrases that were once trademarks may fall into the public domain, at which point they are no longer protected under the law. "Aspirin" is an example of such a lost trademark.2
To receive the broadest protection, merchants must apply for federal registration at the U.S. Patent and Trademark Office (PTO), which publishes new applications monthly. If no other merchants file objections within five years, the PTO registers the mark and notifies the applicant. The applicant is then considered the uncontested owner of the mark throughout the country, and may begin to notify others of that fact with the ® symbol.3
When an allegation of trademark infringement arises, the case will be tried in federal court if the contested mark is registered, or in state court if not. In federal court, the registered owner is presumed to have the uncontested right to exclude others from use of the mark.
In the absence of a federally registered owner, state courts will examine factors such as how long each merchant has used the contested mark, how distinctive the mark is, whether the merchants maintained control of their marks, and whether they do business in overlapping geographical regions. State courts will particularly focus on public policy interests, and estimate the likelihood of confusion by the average consumer. For example, although a law database firm had for many years done business under the name "Lexis," an automaker was subsequently permitted to use the name "Lexus." The court reasoned that, as lawyers, Lexis customers are presumably sophisticated enough to avoid confusion, and that buyers of a luxury automobile are unlikely to be surprised when they do not receive a database report.
For assistance with trademark protection, or to learn about CU's policies for licensing trademarks, please contact:
Tara Dressler, Associate Director for Trademarks (CU system) - 303-860-56835