Establishing Trademark Rights
A mark owner can establish rights to a trademark by being the first to use the mark in commerce or by filing an application and registering it with the USPTO. The use in commerce must be bona fide, so the mark can’t be used merely to claim title as the first user of the mark. This includes transporting or selling the goods with the mark placed in any manner on the goods. Other tests for whether the mark has been genuinely used is whether the use was pervasive enough for other competitors to notice; or, if the mark has penetrated the market enough to make it confusing to consumers if another company subsequently uses a similar mark. A mark owner does not need to file their mark with the USPTO, but adequate records are required to show that they genuinely used the mark before another party. If any litigation arises over which party should be afforded protection for the same or highly similar marks, then the USPTO gives priority to whichever party was the first to register, first to create the mark or the first to use the mark in commerce.
A mark must be distinctive to be protected as a trademark. A distinctive mark can distinguish one type of goods from another. Any party who is considering registering their trademark must consider whether their mark is distinctive enough to be afforded protection. There are different categories of marks: generic, descriptive (with or without secondary meaning), suggestive, arbitrary and fanciful. Generic and descriptive (without secondary meaning) marks are not protected and can never be registered. Generic marks are commonly used words that define the product; for example, a bag of carrots with the label “Carrots”. Some marks can become generic because their names have been widely used and then adopted as the common name (“genericide”), such as a vacuum flask, commonly referred to as a thermos. Descriptive marks describe the products’ characteristics; for example a bag of carrots labeled “Orange, rod-like shaped vegetables”. These marks are not distinctive enough to gain trademark rights or protection and if an application is filed, the USPTO will deny registration.
Descriptive marks can acquire a secondary meaning when a consumer can identify the source of the goods because a new mental association between the mark, the goods and the source (producer) was established through time and use. Some examples are Sharp for televisions or Holiday Inn for hotels.
Suggestive marks bring to the consumer’s mind the source of the product, but the consumer must use some imagination or thought to reach a conclusion as to the nature of the goods. Some examples are Playboy for men’s magazines, Jaguar or Mustang for fast-moving cars and Coppertone for suntan oil. Arbitrary and fanciful marks are unrelated to the product and do not have meaning, but for the mark itself, such as Snickers, Reebok or Sony. These marks are considered inherently distinctive.
In sum, a person establishes trademark rights if they are the first to register or to bona fide use in commerce a distinctive mark.