Trademark Your Work

Protection is proportional to distinctiveness. Whether a trademark is a symbol, word or a phrase, it should be easy to recognize if it is to serve as a quick identifier. Depending on the likely ease of recognition, courts sometimes classify trademarks into three loosely defined categories: 

• Distinctive trademarks: Made of a coined word or specially designed symbol, these trademarks are unique and are afforded the strongest protection under the law. Examples of distinctive trademarks are "Xerox," the silhouette of a buffalo overlaid with the interlocking letters C and U, and the musical notes G-E-C of the NBC network motto.
• Suggestive trademarks: These trademarks describe a product but also hint at an origin or characteristic, typically with an unusual twist or combination of words. Examples in this fuzzy category might be "Ivory Soap," "Mister Donut," and "Wheat Thins." 
• Descriptive trademarks: This category is the least distinctive in that they are composed of common words used in a common way. To receive any protection, these merely descriptive trademarks must have acquired a secondary meaning, for example through the public's long association of the phrase with a particular merchant. "Park & Fly," "Builder's Warehouse," and "The Country's Best Yogurt," are examples.​​​ ​

To receive protection under state law and within the regions where a company does regular business, a merchant need only use a mark consistently and maintain control of its use. Notification to the public and other merchants that the symbol or phrase is being used as a trademark may be accomplished with the superscript symbol TM. The price for a merchant's failure to maintain control of a mark is that words or phrases that were once trademarks may fall into the public domain, at which point they are no longer protected under the law. "Aspirin" is an example of such a lost trademark. A State Registration may be obtained for a trademark through the Secretary of State’s Office for a nominal fee.

In order to receive federal protection for a trademark, merchants must apply for federal registration at the U.S. Patent and Trademark Office (PTO). This is the broadest trademark protection available as it is nationwide protection. The process to obtain a federal registration takes approximately nine months. Once federal registration is granted, notification to the public and other merchants that the trademark is federally registered may be accomplished with the symbol ®. If no other merchants file objections to the registration within five years, the applicant may file an affidavit with the PTO claiming continued and uninterrupted use and then the registration would be incontestable. Federal trademark registrations are renewed every ten years, as long as the trademark is still in use.

When an allegation of trademark infringement arises, the case can be tried in federal court if the contested mark is registered, or in state court if not. In federal court, the registered owner is presumed to have the right of ownership and to exclude others from use of the mark.

In the absence of a federally registered trademark, state courts will examine factors such as how long each merchant has used the contested mark, how distinctive the mark is, whether the merchants maintained control of their marks, and whether they do business through similar channels of trade and in overlapping geographical regions. State courts will particularly focus on public policy interests, and estimate the likelihood of confusion by the average consumer. For example, although a law firm database had for many years done business under the name "Lexis," an automaker was subsequently permitted to use the name "Lexus." The court reasoned that, as lawyers, Lexis customers are presumably sophisticated enough to avoid confusion, and that buyers of a luxury automobile are unlikely to be surprised when they do not receive a database report.