Protecting Your Trademark
Scope of Protection • Trademark Prosecution • Domain Name Disputes
In the U.S., trademark rights are based on use. Therefore, the most important rule to remember is that you must use your trademark in connection with your goods or services or you may lose your rights.
When you need legal advice on your rights to a Mark, or need assistance with a trademark prosecution or representation in a domain name dispute, contact the Law Offices of Joseph C. Messina . Our trademark lawyers have years of experience in every area of trademark and copyright law, from applying for a trademark to defense or prosecution before the Trademark Trial and Appeal Board .
Trademark infringement knows no state or national borders, and neither does our law firm. We have global connections with legal associates working in a number of key foreign countries. Our attorneys act as your liaison with the foreign associates, managing and supervising your case. We will diligently monitor your trademark portfolio and provide you with updated reports periodically. Your portfolio will receive personalized attention from experienced trademark counsel.
Are All Trademarks Extended The Same Scope Of Protection?
The amount of protection given to a trademark depends on the strength or weakness of a Mark. Some Marks will be entitled to greater protection than others. Trademarks can be divided into five basic categories:
- Coined Marks: These are Marks consisting of invented words or phrases (completely made up) without a dictionary meaning. Examples are KODAK®, ROLEX®, and EXXON®. Coined Marks are the strongest types of Marks. A trademark owner who selects a coined Mark will have a distinct advantage in the marketplace.
- Arbitrary Marks: These Marks are comprised of common words, but applied in an unfamiliar way. You will find a meaning in the dictionary for these words or terms but they will not relate to the trademark owner's goods or services. Examples are IVORY® for soap, APPLE® for computers, CAMELS® for cigarettes. These types of Marks are inherently distinctive and very strong.
- Suggestive Marks: These Marks suggest something about the goods or services but you will need to use your imagination to make a determination as to the nature of the goods or service. Suggestive Marks are afforded less protection than coined or arbitrary Marks. Examples include PLAYBOY®, CITIBANK®, and UNCOLA®.
- Descriptive Marks: These Marks have words or terms that describe some characteristic, quality, purpose, or property of a product or service. Descriptive Marks can be registered, but the United States Patent and Trademark Office will usually require that they first develop secondary meaning. This occurs when the consumer learns to associate the Mark with a single source. Hence, the primary meaning is the ordinary English language meaning conveyed by the term. The secondary meaning (or distinctiveness) is the consumer's learned association. Secondary meaning is established by some period of use, sales, or advertising. Examples are QUIK PRINT® for fast printing and copying services, and BABY BRIE® for mini-size brie cheeses. These are not considered strong Marks.
- Generic Terms: These consist of the common or generic word or words for goods or services. These terms cannot serve as a trademark, and thus are not afforded any protection. An example is TABLE for tables.
Set up a free consultation by contacting the Law Offices of Joseph C. Messina or calling us at 914-381-2728. We offer experienced trademark assistance to clients in Stamford, Connecticut, Westchester County, New York, New York City, and nationwide.