Trademark Primer - Chose your marks wisely.

I had a meeting recently with a client about the strength of their marks and I thought I would share. In a nutshell, trademarks are words or phrases that identify the source of a product or service. In terms of strength, their are five levels of marks ordered in order of their strength, strongest first: (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5) generic. Fanciful marks are made up names, such as Kodak. Arbitrary are unrelated words applied to a product, such as Apple for computers. Suggestive marks require an additional mental step to make the connection with the product, such as Coppertone for sun tan lotion. Descriptive marks, as the name applies, describes the product, e.g., qwerty for keyboards. Generic marks are words that become synonymous with a product, such as thermos. 1, 2, and 3 are enforceable marks. 4 can only be enforced if secondary meaning can be established. Basically you have to show that consumers associate the descriptive mark with your product. Generic marks get no protection.

There are trademark rights under both state and federal laws. With state laws your rights mature when you use the mark in commerce. Federal law requires use in commerce and registration with the Patent Office. There are also what are called intent to use applications that don't require actual use in commerce as a prerequisite to federal filing. Federal trademarks provide national protection whereas state trademark protection is limited. Federal protection cannot preempt prior use of the mark. In these instances the prior user will be able to continue using the mark within the relevant territory.