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What Are the Three Requirements for Trademarks?


What Are the Three Requirements for Trademarks?

There are multiple requirements for trademarks and for litigation around trademark infringement, but there are three primary requirements businesses need to be aware of: Trademark distinctiveness, use in commerce, and lack of conflicts.

What Makes a Trademarked Item Distinctive?

There are three levels of legally defined distinctive marks:

  • Fanciful. That means the item being trademarked is entirely invented and is not found in a dictionary. For example, Spotify was a word that wasn’t in any dictionary and was created solely to name that company.

  • Arbitrary. This is a mark that does exist in the dictionary, but how the business uses it doesn’t relate to the dictionary’s definition. An example of an arbitrary name is Camel tobacco products.

  • Suggestive. These could be in the dictionary (but not always) and are related to the product or service being sold. KitchenAid is an example of a name that indicates it’s a kitchen tool and appliance company.

There are two types of marks that are not usually eligible for trademarks.

  • Descriptive. These are dictionary terms that may be used in connection with products or services that are related to the term. International Business Machines would not have initially earned a trademark. But as the company grew, the recognition of IBM as a separate, distinct business crossed the threshold known as “secondary meaning”—when basic words become recognized in this context as something else.

  • Generic. Generic marks are things that exist in the dictionary and have a well-known definition that would make them difficult to distinguish. One example would be a hat shop called simply Hats.

What Is “Use in Commerce”?

Trademarks are not for personal use. They must involve products or services that a business offers. What’s more, trademarks cannot be retained if the products or services are no longer offered. Companies must prove to the United States Patent and Trademark Office (USPTO) that the trademarks they’re applying for represent actual business items.

What Does Lack of Trademark Conflicts Mean?

The most obvious reason the USPTO would reject a trademark is it duplicates a previously trademarked mark. That’s one of the reasons that researching the USPTO’s established trademarks database is important. It will save time if you know there’s another organization out there already protected with that mark.

But trademarks don’t have to be identical. The USPTO will look at similar items, particularly if they’re in the same business realm. The bottom line is if a consumer could reasonably be confused by too-similar offerings, such as a business name or logo that offers similar types of services or products, the USPTO could reject the trademark application.

Let Us Advise You

Trademark laws and regulations can be complex. Call us at 317-663-9190 to discover how our attorneys can leverage knowledge and experience to help you through the process.