The next strongest
The next strongest, and more problematic, type of marks are "merely descriptive" (such as NEW YORK LAW JOURNAL) or primarily used as a surname (family names, like McDONALD’S for restaurants).
These are not immediately entitled to trademark protection, because it would be unfair for only one company to be allowed to use the words that describe what other companies sell or do, or to impose a monopoly on a family name that other people have. HOWEVER, a mark that is initially merely descriptive can become a uniquely identifying trademark over time, based on sales and advertising and number of customers.
The USPTO will presume that a mark has acquired sufficient secondary meaning if the owner alleges the mark’s been in continuous use for 5 years or more.
The last type of proposed trademark is “generic”
The last type of proposed trademark is “generic”, which are terms that cannot enjoy trademark protection because they are commonplace terms for goods/services. Sometimes, trademarks become generic because their owner does not prevent others from using the mark.
For example, WINDBREAKER is now a common term for a jacket that is wind-resistant; ASPIRIN was once a trademark, but now isn’t. The owner of XEROX is fighting to keep its mark from becoming synonymous with “photocopying”, which would render the term generic and therefore not subject to trademark protection.
Slogans (such as “PRICELESS,” associated with MASTERCARD credit card) or logos (such as the cursive lettering of COCA-COLA, which is recognizable even if written in Hebrew or Arabic) are also protectable.
Sometimes, if a proposed trademark is merely descriptive and, therefore, unlikely to be registrable, we file it as a “words and design” application – because the word in combination with artistic elements, like shading, different kinds of fonts, coloring, etc. can make it unique and subject to protection.
In our next installment, we will discuss trademark searches that will help you ensure that no one else has been using your mark and about how to enforce trademark rights because “if you don't use it, you’ll lose it.”
About the author
Mark Kaufman, Esq. is a graduate of Amherst College and Columbia Law School. He has practiced law for over 25 years. He is the name partner of Kaufman & Kahn LLP, based in New York City. Mr. Kaufman has a broad-based business law and commercial litigation practice with a special focus on trademark and copyright law. He has been responsible for prosecuting, enforcing, and defending hundreds of trademarks and copyrights over the course of his legal career. He also has expertise in negotiating a range of agreements relating to the use, protection and licensing of intellectual property. He represents a range of clients, including artists, e-commerce companies, retailers, and publishers. Mr. Kaufman resides in Westchester County, New York.Website