Overview of Trademark Law

The main law that governs trademarks in the United States is the Lanham Act. If you use a name or logo for your business, you automatically have “common law” trademark rights. These rights are enforceable in state courts. Marks that are registered with the U.S. Patent and Trademark Office are given more protection than unregistered marks in federal courts.

Distinctiveness

A trademark must be distinctive in order to serve as a mark — that is, it must be able to identify the source of a specific product. The four categories established by U.S. courts for determining whether a mark is distinctive are: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, and (4) generic.

Four Categories

Different categories of trademarks have different levels of legal protection. The amount of protection a trademark gets depends on which category it falls in (i.e., how distinctive it is)

Arbitrary + Fanciful trademarks

An arbitrary or fanciful trademark is a mark that does not have a logical relationship to the underlying product or service. For example, the words “Exxon,” “Kodak,” and “Apple” do not have a relationship to their underlying products. Also, for example, Apple’s Apple Logo does not have a relationship to computers. Arbitrary or fanciful marks are easily recognized and inherently distinctive. These types of marks are highly protected by law.

Suggestive trademarks

A suggestive mark is a mark that evokes or alludes a feature of the underlying product or service but does not come out an describe it. For example, the word “Jaguar” is suggestive of a fast car but does not specifically describe it. Instead, some exercise of thought or imagination is needed to associate the word with the underlying product. Like arbitrary or fanciful marks, suggestive marks are given a high level of protection because they are inherently distinctive.

Descriptive trademarks

A descriptive mark is a mark that directly tells buyers something about a product or service (e.g., its color, function, or ingredients). For example, “Vision Center,” “British Airways,” and “Cartoon Network” each describe an aspect of the underlying product or service. Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have “acquired distinctiveness,” which comes from years of exclusive use.

Generic trademarks

A generic mark is a mark that describes an entire category or type of product or service. For example. “Lawn Care,” “Milk,” and “Computer” are generic terms for entire categories of products or services. Generic marks are not protected under trademark law, and a business that sells products or services under these names would have no exclusive right to use that term.