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.)
Federal Registration
of Trademarks
Although protection is available for trademarks is available under state
law, a higher degree of protection is afforded through registration of
the mark in the U.S. Patent and Trademark Office.
Federal registration
allows the owner of the mark to display the familiar ® symbol thereby
putting others on notice of trademark rights.
Trademark rights are no longer restricted to state boundaries; a first
user of a federally registered mark is entitled to nationwide protection.
Federal registration
grants the trademark owner access to federal court. In causes of action
for trademark infringement of federally registered marks, profits, damages,
and costs of the law suit are recoverable and triple damages and attorney’s
fees are available.
A federal registration
may be grounds for stopping importation of goods bearing an infringing
mark.
Contact
the Office to schedule a Free Consultation to discuss how Robert Spitz,
Esq. can go to work for you.
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