By Jacob Pennington, Hg Senior Analyst
Having spent ten years as an intellectual property investigator (IP), I have had the pleasure of researching trademark use on a global scale for some of the most recognized brands and companies in world. When it comes to trademark investigations, there’s one word that sticks out to me the most, USE. Identifying first use, last use, and/or continuous use is the single most important factor in determining trademark rights.
Many people outside of the industry incorrectly believe that an entity or individual has rights to use a trademark merely because they have registered or applied for the mark before anyone else…I’m here to tell you that that’s simply not the case.
In this 3-part blog series, I will breakdown why USE dates are so important in the trademark industry, identify the different types of trademarks, highlight one of the most important tools that our Hg Senior Analysts use for trademark investigations, and provide a few fun facts about intellectual property. Did you know you can trademark a sound?
Types of Trademarks
Trademarks are grouped into seven primary categories: Generic, Descriptive, Suggestive, Fanciful, Arbitrary, Service, and Trade Dress.
As mentioned earlier, a trademark can become generic, also known as “genericized,” if/when the majority of the public associates the mark with a product or service rather than a specific brand. Aspirin, Yo-Yo, Kleenex, Band-Aid, and Coke are all great examples of genericized marks. For instance, you might ask a friend or co-worker for an Aspirin to treat your back pain, however, it is understood that any general pain reliever will work. Coca-Cola is another great example of a genericized mark: “Despite Coca-Cola owning the trademark to the name Coke, in some parts of the United States Coke is used as a generic term for any kind of carbonated beverage.”
According to the International Trademark Association (INTA), “a descriptive mark is a word (or words) that merely describes a product or its ingredient, quality, characteristic, function, feature, purpose or use.” It is important to note that descriptive marks are not usually granted trademark protection; however, a mark can become eligible for protection if it acquires secondary meaning. Holiday Inn is a great example of a once descriptive mark that has acquired secondary meaning.
A suggestive mark provides clues or hints about the nature of a product or service without directly describing the product or service. Jaguar, Netflix, Airbus, Greyhound, and Citibank are some of the more notable suggestive marks; these names all suggest what the product or service is without making it instantly clear.
A fanciful trademark is any name, term, or logo that is unlike anything else that exists. As a result of their uniqueness, these types of marks are typically the easiest to protect against third-party use. Brands like Apple, Amazon, Nike, ExxonMobil, and Adidas are some of the most recognizable brands in the world thanks to the strength of their fanciful marks.
An arbitrary mark is a word or words that have a well-known meaning, but the meaning is unrelated to the product or service offered. Amazon (online marketplace), Camel (tobacco), Coach (luxury goods), Dove (soap or chocolate), and Shell (gas) are all strong arbitrary marks.
A service mark is like a trademark, but it is used to identify the company that provides a service or services rather than identify the products sold by that company. Think McDonald’s for food services or Coleman for HVAC services.
Finally, trade dress refers to the overall look and/or feel of a product or service, such as its color, shape, size, configuration, and packaging. Protecting a trade dress can be especially important to a company and its product(s) due to the brand recognition attached to specific elements of product design and packaging. The shape of a Coca-Cola bottle or Goldfish Crackers, cand bar wrappers, and the red wax seal on a bottle of Maker’s Mark are all examples of well-known trade dress shape.
Are you an analyst or investigator looking for advanced #OSINT training ? If so, check out Hg’s webinar series, where you can attend live sessions and receive CEUs or watch previously recorded sessions to beef up your investigative skills.
Are you or a client in need of trademark intelligence? As veteran investigators in trademark intelligence and investigations, Hg understands the business world and the legal and regulatory frameworks in which corporations and privately held companies operate. Our skilled trademark analysts excel at providing the research and analysis required for successful clearance, assertion, and defense of valuable trademark property. Learn how our team can arm you with the data you need.
Jake is a Senior Analyst at Hetherington Group, where he works with clients in a variety of industries, helping to protect their brands on a daily basis. He brings ten years of experience in trademark infringement investigations to Hg. His intelligence reporting and analysis assist attorneys and their clients in clearing the landscape for new brand identities, asserting territorial ownership, and defending trademarks against unauthorized third party infringement.