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NEWS & ARTICLES
NEWS UPDATE & ARTICLES
by Atty. German Castillo
Intellectual property is an intangible, it is not something that can
grasped in a physical sense. Trademarks are one category or
intellectual property that is probably the most essential to the
everyday business person.
In a typical scenario, a retailer of goods may sell both high end name
brands along with other less expensive brands that are similar in
appearance and function. Often, with electronic commerce an
integral part of today’s retailers, the reach is not just local but
international. Many such e-commerce retailers are made aware of
trademark laws for the first time when the trademark protected name
brands, resenting the competition posed by these retailers, send
letters threatening lawsuits over alleged trademark infringements.
So, what is a trademark?
A trademark, generally, is a distinctive word, symbol, phrase or feature
that a seller of goods or services will rely upon to distinguish its own
goods or services from those of competitors. Famous trademarks
include, Exxon, Xerox, IBM, Nike, Pepsi, and John Deere.
So what types of words, phrases or symbols qualify as trademarks?
It can not be stated too often in the realm of trademark law that in
order for a word, symbol, or phrase to qualify as a trademark, it must
be distinctive. By that it is meant that the mark (i.e., word, phrase,
symbol, or feature) must be capable of identifying the source of a
particular product or service. The more distinctive the trademark, the
more protection against infringement the mark will generally receive.
Specifically, courts have traditionally grouped trademarks into four
different categories, with each category receiving differing degrees of
trademark protection. The first category receives a high degree of
trademark protection and relates to marks that are “arbitrary or
fanciful.” Such a mark bears no logical relationship to the underlying
product. For example, the words "Lexus," "Xerox," and "McDonalds"
bear no inherent relationship to the products they identify, namely,
automobiles, copiers, and fast food.
The second category is for suggestive marks. These types of marks are
not completely arbitrary in that they do have some relationship to the
product bearing the mark. For example, “Coppertone” would bear
some relationship to sun-tan lotion since it would connect the mind of
the consumer to the copper tone of a sun tan.
In contrast to “suggestive marks,” which describe a product only
indirectly through the additional step of the consumer exercising some
degree of imagination, a “descriptive mark” directly describes, rather
than suggests, a characteristic or quality of the underlying
product (e.g. its color, odor, function, dimensions, or ingredients). For
example, “Holiday Inn,” “Chinese Restaurant,” and “Automotive Center”
describes some 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 "secondary
For example, even though originally Holiday Inn might have been
considered merely descriptive, today enough advertising, years of use,
and franchise control has been exercised that the term “Holiday Inn”
has become associated with a specific brand of hotels.
The final category of words, phrases, or symbols is accorded no
trademark protection and applies to “generic marks.” A generic mark is
entitled to no protection under trademark law because giving a single
producer control over the use of the generic mark would give that
producer too much of a competitive advantage.
Does a Trademark owner have exclusive rights to the mark?
Having explained what a trademark is, a logical question for the
business person is whether their use of a trademark necessarily means
they must cede to the demands of a trademark holder’s letter. The
issues can be very fact specific, but the short answer is that exclusive
use of the trademark by the owner is not necessarily the case. There
are fair uses others can have to the trademark.
In conclusion, the business person seeking to expand their operations
(e.g., uniquely named stores or restaurants) via franchise or otherwise,
would be well advised to first obtain a trademark. Likewise, the retailer
selling multiple products would be well advised to consider the
implications of misuse of another’s trademark—particularly if a notice
letter has been issued by the trademark owner.
Why should I obtain a trademark?
Here are some specific benefits of having a federally registered
1. Constructive notice nationwide of the trademark owner's claim.
2. Evidence of ownership of the trademark.
3. Jurisdiction of federal courts may be invoked.
4. Registration can be used as a basis for obtaining registration in
5. Registration may be filed with U.S. Customs Service to prevent
importation of infringing foreign goods.
What is a copyright?
A copyright protects the form of expression of a creator against
copying. Literary, dramatic, musical and artistic works are included
within the protection of U.S. copyright law.
The USPTO does not register copyrights. Please refer to the Copyright
Copyright is a form of protection provided by the laws of the United
States (title 17, U.S. Code) to the authors of "original works of
authorship," including literary, dramatic, musical, artistic, and certain
other intellectual works. This protection is available to both published
and unpublished works.