Understanding Intellectual Property & Trademark Rights

Understand Intellectural Property & Trademark Rights

To protect your Intellectual Property rights in a trademark, you should try to avoid the use of descriptive words in the trademark. A word which merely describes a product or service is often too weak to function as a trademark.

Descriptive Words as Trademarks

A merely descriptive trademark, such as Cycle Cooler for motorcycle oil coolers, may have instant sales appeal since it immediately conveys the desirability of a product. However, such descriptive words are not, at least initially, protectable as trademarks, since competitors may need to use those words to describe their product. You will have little chance to build up Intellectual Property rights in a business name or slogan containing descriptive words.

It is possible for what is initially a descriptive word to become protectable later as a trademark IF it develops what is termed secondary meaning. In other words, if a descriptive word is used exclusively as a trademark for a number of years, it may come to have a meaning in addition to the primary meaning, which is descriptive of the product. In that case, you will be able to build up Intellectual Property rights in the trademark.

It will be difficult to establish Intellectual Property rights in surnames and geographic words for the same reason: there is a reluctance to allow any one person to claim exclusive rights in a surname which is also the name of other persons, or in a geographic name for a locale in which others offer competing goods or services. It is possible for a surname to become a trademark if, after years of promotion and use, it acquires a secondary meaning. Such surnames as Scott (for paper products) and Johnson (for wax products) have been found to have secondary meaning. Those companies now have solid Intellectual Property rights in those names.

It is possible for Intellectual Property rights to develop in a geographic word if the locale it identifies is not known for the goods or services for which the mark is used, and use of the word is not likely to deceive the public as to the geographic origin of the goods or services. Thus, while Nantucket has been found to be a valid trademark for shirts manufactured elsewhere, Maid in Paris, for a perfume not produced in Paris, was found to be deceptive, since Paris is known for perfume and persons viewing the mark might believe the perfume actually came from Paris.

Generic Words

It is even harder to develop Intellectual Property rights in generic words, words that are so inherently descriptive of a product or service as to be incapable of ever functioning as a trademark. Generic words can be thought of as the common name of the product or service, such as cologne, lawn mower, grocery store and golf ball.

Generic words can not be appropriated by a single party as trademarks, since the public perceives and uses such words as common nouns/terms. As a result, competitors should be free to name their products with the same generic words and they will not infringe on another’s Intellectual Property rights if they do so.

You can lose your Intellectual Property rights in a once-protectible trademark if your product name becomes used by the public as the common or generic product name, for example escalator, aspirin, kleenex, cellophane, thermos and yo-yo. As soon as trademarks are found to be generic product names, they become available for use by everyone, virtually eliminating your Intellectual Property rights in the trademark. This loss of rights usually results from the commercial success of the trademark, along with the trademark owner not controlling the use of its Intellectual Property.

Attorney Sandra J. Franklin specializes in Business and Intellectual Property counseling and dispute resolution. See IntellectualPropertyUmbrella.com for more information.