Consistent and proper
use of registered trademark is important.
Since a trademark draws its strength from its distinctiveness, subtle changes over time can weaken a trademark. If the public no longer readily associates a mark with the product, the mark loses distinctiveness. Such a loss makes the mark more difficult to protect, and re-register. Generally, to claim the protection of a national registration, the mark must be displayed exactly as it appears in the registration. Care should be taken to faithfully reproduce the mark as registered. Even slight changes can cause loss of rights in the mark. For example, adding a plural or adding/deleting an apostrophe mark may be a large enough to result in significant loss of rights. In the worst case, changes may be considered “abandonment” and result in a complete loss of rights. It is important to implement a consistent overall philosophy regarding adoption and use of marks. Of course, as a company and its products mature, changes are inevitably required to keep pace with an ever-changing market place.
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Brand Recognition Brand
Recognition is
critical to the success of most sales businesses today and is an
important reason why famous brands such as KODAK,
YVES ST. LAURENT, and ROLEX have been so
successful. Consumers depend on brand identity because it makes
their choices simpler. Familiar trademarks allow buyers to find
products that they know are reliable. Success in the
marketplace largely results from the predictable quality of a brand
which, in turn, creates repeat business. Without effective protection of
trademarks, a brand owner loses the ability to control that reputation and
the goodwill that goes with them. Choosing a trademark is time consuming and sometimes frustrating. It is tempting to introduce a mark that describes the product or its characteristics. However, as discussed in the column to the right, a descriptive mark is generally not distinctive, is difficult to register, and hard to protect. As a general rule, when developing a new trademark, care should be taken to ensure that the mark is fairly characterized as falling within one of the three strongest categories. Anything that can act as a "source indicator" can function as a trademark. It might be word (e.g., LEVIS), a phrase or slogan (e.g., JUST DO IT.); a number (e.g., 571), symbol (an apple), or a color (e.g., red, white and blue). Such marks may represent a company’s reputation and symbolize goodwill in the business community. Unlike the policies behind providing protection for inventions (which are covered by patent law) and original works of authorship like songs or books (which are covered by copyright law), the motivation for protection of trademarks is NOT based on the desire to reward the business person for his/her ingenuity or creativity in coming up with a clever name. In virtually all modern trademark systems the trademark is protected for two reasons: (i) to allow the owner of the business to control its own reputation and (ii) to protect the public from fraud and passing off. Thus the only to way to gain any rights in a trademark is to actually use it in commerce in such a fashion that it represents the goodwill of your or your client’s company. By registering your trademarks with the U.S. Patent and Trademark Office you acquire valuable rights and specific remedies for infringement of your marks. Even though the U.S. system permits registration of trademarks and provides significant benefits for doing so, U.S. trademark rights still spring from use and the first party to use the mark in commerce generally holds priority. Proof of actual use in commerce, and thus potential brand recognition, is required before any U.S. registration can be issued. However, registration does not necessarily equate with trademark strength. Once
a mark is registered, it should be displayed properly with the appropriate
symbol (e.g. TM or ®) or in all capital letters.
 | Strength of TrademarksDistinctiveness is what provides a trademark’s strength. In increasing order of strength, trademarks are traditionally categorized as generic, descriptive, suggestive, arbitrary, or coined. A generic mark has no strength and is entitled to no protection. A coined mark has the greatest strength and, consequently, is entitled to the most protection. Generic A generic mark is one that tells the consumer what the product is, but not the source. Milk, beer, eggs, bicycles, and clothes are examples of generic marks which are not registrable or entitled to trademark protection. Descriptive A descriptive mark tells the consumer about the product or its characteristics. For example, white milk, farm eggs, cold beer, and work clothes would be descriptive in nature and entitled to little, if any trademark protection. Unless such a mark has “acquired distinctiveness” or “secondary meaning”, trademark registration will not be possible.Suggestive A suggestive mark has some connection to the product, but requires a second mental step to associate the product with the mark. Examples of suggestive marks include Microsoft and Coppertone. Suggestive marks are much stronger than generic and descriptive marks, but require more creativity and imagination to develop. In a crowded field, such as clothing, suggestive marks may be difficult, but not impossible, to develop. Arbitrary An arbitrary mark generally is wholly unrelated to the actual product, but may have a common meaning. Examples of arbitrary marks include Amazon, Apple, and Shell. An arbitrary mark is generally very strong and entitled to a significant amount of protection. Coined A coined mark is entitled to the broadest amount of protection. Examples of coined marks include Kodak, Exxon, and Xerox. These marks are the generally the easiest to register and the easiest to protect. However, from a business standpoint, they may be the most difficult to establish in the marketplace.
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