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AUGSD Member Article: Trademark Law
(submitted July 16, 1997)

© 1996 David B. Himelstein. All rights reserved.

Trademark Law

This article provides some fundamental information about trademarks.

What is the Function of a Trademark?

A trademark is a distinctive symbol or mark which is associated with a product and identifies the source of the product. (Similarly a service mark identifies the source of a service. Most of the law on trademarks is the same for service marks.) If a product shows consistent quality, the customer can notice the trademark and select the product again. In other words a trademark represents the goodwill of a business. A trademark is not a trade name. A trade name designates a company or similar legal entity, not the identification of goods and services. Some companies use the same name as a trade name, a trademark and a service mark. For example "XEROX" is the name of a company; it is also used as a trademark pertaining to printers; and "XEROX" is also used to identify certain services provided by the company. (The ® symbol signifies that a trademark or service mark is registered with the U.S. Patent and Trademark Office. The use of TM and SM signifies a mark intended to be a trademark or service mark but not registered with the U.S. Patent and Trademark Office.)

What is a Trademark?

Basically a mark is whatever in the marketplace distinguishes goods or services of one source from those of another source: a name, word, design of a container (Coca Cola bottle), logo, numbers (7-Eleven), series of letters, a sound or series of sounds (remember NBC); three dimensional objects; a color or colors; a phrase; a telephone number; a fragrance. But it cannot be the title of a book, functional features of a product, or generic designations (more on this later).

Types of Trademarks

The types of trademarks spans a spectrum from those which may not be protected, through those which are protected in a limited way, to those which are very strongly protected: generic, descriptive, suggestive, arbitrary and fanciful, and coined. The spectrum also is a rough measure of the increasing difficult of attaining public association between the mark and your product. Thus a descriptive mark would convey to the customer what the product is more easily than a coined mark, but would provide usually weaker protection from others using similar marks.

Generic: a word by which something is commonly called, e.g. "paint" or "milk." Exclusive rights are not available for generic terms; all competitors may refer to their products using generic terms.

Descriptive: conveys an immediate idea of the ingredients, qualities or characteristics, e.g. "Chapstick," a stick for chapped lips. A descriptive mark is usually granted a narrow scope of exclusivity, i.e. it is a weak mark; but it is less likely that the owner of some other mark can prevent you from using a descriptive mark. The strength of a descriptive mark depends on its distinctiveness, either when adopted or through its use. If it is distinctive enough, it may be registered.

Suggestive: mark requires some imagination, thought and perception to determine the nature of the goods or services, triggering a "mental pause," e.g. "Rent-A-Wreck." A suggestive mark may be registered. The scope of protection depends on the uniqueness or distinctiveness the mark achieves through use in commerce.

Arbitrary or Fanciful: uses ordinary words but in an arbitrary or fanciful way, e.g. "Baby Ruth" for a candy bar. There is no association, descriptive or suggestive, between the mark and the goods or services. Such a mark may be registered and is usually accorded a broad scope of protection.

Coined: is a word which has been created or fabricated and is meaningless aside from its connection to a product or service, e.g. "Kodak," "XEROX," and "EXXON." A coined mark is the strongest of marks and may be registered.

Is Registration necessary?

Registration with the U.S. Patent and Trademark Office is not necessary but does provide certain benefits. Perhaps the two most important benefits are that it establishes your ownership of the mark and your right to exclusive use. A trademark may also be registered at the state level, providing essentially the same benefits within the state. Registration also places the public on notice of these rights, allowing the owner to better protect the mark.

A state registration is in force typically for ten years. Current federal registrations are also in force for ten years and are renewable.

Trademark Searches.

Before the final selection of a mark and especially before spending money on advertising or packaging it is advisable to perform a search to determine whether your mark interferes with some other mark. The risk is that your mark will gain some recognition in the market identified with your product, and then you will be forced to terminate your use of the mark. There are a variety of searches depending on the product and the marketing plans. Typically, a search may be performed within a week or even overnight.

The legal information contained above is informational in nature and cannot be considered legal advice. Every situation has its own factual context and cannot be judged without that context.

Mr. Himelstein is a San Diego attorney who helps clients to provide legal protection for their intellectual property associated with computer software and hardware and assists them in general business matters.

This is the second in a series of articles on legal issues affecting software and the computer industry. If you have legal questions or require services, visit Mr.Himelstein's web site at or contact Mr. Himelstein:

By voice: (619) 674-6177

By facsimile: (619) 674-6176

By mail: P.O. Box 28337, San Diego, CA 92198

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