Protecting Your Ideas - Basic Trademark Law For A South Dakota Business


What is the USPTO?

The United States Patent and Trademark Office (USPTO) is a fee-funded agency of the U.S. Department of Commerce. The role of the USPTO is to grant patents for the protection of inventions and to register trademarks and service marks for products and services. It serves the interests of small and large businesses as well as consumers, and helps strengthen the economy by promoting the industrial and technological progress of the nation.

The Commissioner for Trademarks heads the trademark organization and ensures that the USPTO properly examines trademark applications and grants registrations when applicants are entitled to them; records ownership changes of trademarks; and maintains search files and records of U.S. trademarks.

What is the Lanham Act?

In 1946, Congress enacted the Lanham Act, which is the federal trademark protection law. The Act was created to protect consumers and competitors from a wide variety of misrepresentations of products and services in commerce. The law holds liable any person who uses false advertisements or deception to sell goods or services. It also provides that any person using a mark that may be confused for another’s mark, is liable for damages to the owner of the original mark. Also, since the Lanham Act is a federal law, a trademark owner may bring an infringement law suit in a federal court.

What is a trademark or service mark?

Trademarks are often among the most important and valuable assets of a business. A distinctive trademark allows a business to build public goodwill and brand reputation in the goods or services it sells.          

  • A trademark is any word, phrase, name, symbol, or design (or any combination) that identifies and distinguishes the source of the goods of one party from those of others.
  • A service mark is any word, name, symbol or design (or any combination) that identifies and distinguishes the services of one party from those of others. 

For example, WHOPPER is a word mark for hamburgers, THE MICHELIN design is a logo for tires, TASTE THE RAINBOW is a slogan for Skittles candy, and the COCA-COLA bottle is a package design mark for soft drinks. VISA and AMERICAN EXPRESS are service marks for credit card services. Even a sound, smell, color, color combination, or a shape can be a trademark under certain circumstances. For instance, the color pink has become a well-known trademark for insulation used in building construction, and the sound of certain chimes representing the notes G-E-C has become a trademark for the NBC television company.

What are the different types of trademarks?

Selecting a trademark may not be easy. It may be tempting to choose a word that seems “catchy” and describes a feature or characteristic of your goods or services. However, as a general rule, terms that are merely descriptive of products and services can be difficult to protect as marks, and the more descriptive your mark is, the more difficult it may be to stop your competitors from using it.

The more distinctive a mark is, and the more well-known the mark becomes, the wider the mark’s scope of protection will be. Trademarks can generally be categorized into one of four categories

1.)  Coined Marks

Coined marks (also known as a fanciful mark) are at the top of the mountain in terms of distinctiveness and strength. A coined mark has no meaning at all apart from its association with a product or service – it is a “made-up” word (or design). Examples of coined marks are XEROX® for copiers, EXXON® for petroleum products, and GOOGLE® for Web browser services.

2.)  Arbitrary Marks

Arbitrary marks are second on the scale of distinctiveness and strength. An arbitrary trademark is a word that has an ordinary dictionary meaning, but has no special meaning in relation to the goods or services to which it is applied, other than its source-identifying function. An example of an arbitrary mark is APPLE® for computers and SAMSUNG® for televisions.

3.) Suggestive Marks

Suggestive marks are not as distinctive as coined or arbitrary marks, but may still be considered strong marks. A suggestive mark hints at some function or property of the product or service, but does not directly describe it. A consumer is required to use a degree of thought or imagination to ascertain the exact nature of the goods. Suggestive marks often comprise words that embody desirable qualities or characteristics associated with a product or service – such as efficiency, speed, accuracy, comfort or elegance. Examples of suggestive marks include MICROSOFT® for computer software, GREYHOUND® for bus services, and AIRBUS® for airplanes.

4.) Descriptive Marks

Descriptive marks are words or designs that describe the goods and/or services. These marks are among the least distinctive and weakest marks. If the USPTO determines that a mark is “merely descriptive” then it is not registrable or protectable unless it acquires distinctiveness – generally through extensive use in commerce over a five-year period or longer. Descriptive marks are considered “weak” until they have acquired distinctiveness.

Businesses sometimes choose descriptive marks for their goods and services, believing that these marks reduce the need for expensive consumer education and advertising because consumers can immediately identify the product or service being offered directly from the mark. However, this approach can lead to marks that cannot be easily protected and may not be registrable or protectable against later users of identical or similar marks. In many circumstances, adopting a descriptive mark may end up costing more money, either due to higher costs to try to enforce such a mark, or because it may be legally necessary to stop using the descriptive mark and select a new mark.  Examples of descriptive marks include COMPUTERLAND® for computer store services and VISION WORLD® for optical store services.  

What is a “generic” term and can it function as a trademark?

Generic terms are the weakest types of “marks” (and cannot even qualify as “marks” in the legal sense) and are never registrable or enforceable against third parties. Because generic words are the common, everyday name for goods and services and everyone has the right to use such terms to refer to their goods and services, they are not protectable.

For example, the term “toy store” can never function as a service mark for toy store services. A generic term cannot be registered with the USPTO and cannot be protected.

What is “genericide”?

A word that initially functions as a trademark can lose its trademark significance and become a generic term if consumers improperly use the mark in a generic sense to identify a particular type of product or service regardless of source. This phenomenon is sometimes called “genericide.” Former trademarks like “kerosene,” “escalator,” and “aspirin” all met this fate. Consistent and proper use of trademarks and consumer education can help combat genericide. For example, the Xerox Company has successfully protected its XEROX® mark from genericide by investing in special advertising to educate the public about the proper use of the mark.