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Qualifying for Trademark Protection FAQ


Frequently asked questions explaining what types of names are given trademark protection.

What types of trademarks or service marks are entitled to legal protection?

As a general rule, trademark law gives legal protection to names, logos, and other marketing devices that are distinctive. These distinctive trademarks are sometimes referred to as "strong" trademarks. Strong trademarks come in two forms: They may be "born strong" because they are creative or out of the ordinary, such as Yahoo (also known as "inherently distinctive" marks).

 
Trademarks That Are Born Strong

Trademarks that are unusually creative (and that do not describe some quality or feature of the goods or services) are known as inherently distinctive marks. Typically, these marks consist of:

  • unique logos or symbols, such as the McDonald's Golden Arches or the IBM symbol
  • made-up words, such as Exxon or Kodak (called "coined marks" or "fanciful marks")
  • words that are surprising or unexpected in the context of their usage, such as Time Magazine or Diesel for a bookstore (called "arbitrary marks"), and
  • words that cleverly suggest or evoke qualities about the product or service, such as Slenderella diet food products (called "suggestive or evocative marks").

Strong trademarks may also become strong because they become well known to the public through their use over time or because of a marketing blitz.

 
Trademarks That Become Strong

Trademarks that describe some feature or quality of the goods or that are based on someone's name or a geographic term are usually considered to be "weak," and thus unprotectible under trademark law. However, once the trademark owner can demonstrate substantial sales, advertising, or other public awareness of a weak trademark (known as "secondary meaning"), the trademark will be considered distinctive and can be registered with the United States Patent and Trademark Office (USPTO). Examples of weak marks that have acquired secondary meaning include:

  • people's names, such as Peet's Coffee or Newman's Own Salad Dressing
  • geographic terms, such as Bank of America or DKNY, and
  • words that describe the goods or services, such as Beef and Brew restaurants and Vision Center eyeglass stores.

For more information about qualifying for and applying for federal trademark registration, see Filing a Federal Trademark Application FAQ.

Copyright 2006 Nolo

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