My areas of expertise as a trademark attorney include:
• Trademark Registrations
• Trademark Searches
• Trademark Office Actions
• Trademark Infringement Matters
• Trademark Cease and Desist Letters
• Trademark Oppositions
• Intellectual Property
• Patent Applications | |
What is a trademark?
A Trademark indicates the source of a product or service. Common examples include the names of product or services (Coca Cola, Kodak), slogans that are associated with products or services (Don't Leave Home Without It), and logos or designs. It may also be possible to claim trademark rights in distinctive colors (the color pink for Owens Corning insulation), distinctive phone numbers, distinctive music (the NBC chime), etc.
How can one lose rights to a trademark?
One can lose rights to a trademark if a mark that was once distinctive becomes the common generic name for a product or service. This may occur when a trademark owner does not properly police the use of his or her mark. In one example, the word "escalator" was once a trademark for a brand of moving stairs, but because of improper policing of the mark it has become generic. The name of a product or service should always be capitalized. It should always be used in conjunction with the common generic name of the goods or service as in "Ford motor car" or "XYZ brand of toilet tissue". Never use a trademark as a verb; it is improper to "Xerox a document" - instead, one photocopies a document using a Xerox brand copy machine.
Distinctiveness of Marks
Under trademark law, a mark must be distinctive (i.e. capable of distinguishing the product or service from others.) Thus, trademarks are classified according to their level of distinctiveness and are afforded protection according to their classification.
*Arbitrary or fanciful marks. The most distinctive marks are those which are arbitrary or fanciful. Arbitrary marks are those which have no relation to the goods (e.g. Apple for computers) and fanciful marks are coined or invented names (e.g. Kodak film). As long as they are not confusingly similar to other marks, arbitrary or fanciful marks are afforded the highest level of protection.
*Generic marks. On the opposite end of the spectrum of distinctiveness lie generic marks - the common name for the product or service. Generic marks are incapable of protection under trademark law because others need to use the common name to compete effective. Thus, one cannot claim trademark rights in the word ‘desk’ to identify the supplier of a desk.
*Descriptive marks. Between arbitrary/fanciful marks on one end of the distinctiveness spectrum and generic marks on the other end lie descriptive marks. These are marks which describe an attribute, function or use, characteristic, purpose or quality of the goods or services. Descriptive marks are only eligible for trademark protection if they acquire secondary meaning (consumer recognition of the term as a trademark.) | 
