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Trademarks are how sellers distinguish their goods or services from those of their competitors. Trademarks also help consumers identify the source of desired goods or services. While care needs to be taken with any trademark application, trademarks are in fact earned by their use in the marketplace. That is why applications for trademarks premised on an intended use allow for only a short period before the applicant must file an affidavit of actual use for the mark in commerce. Trademark applications are also limited to certain classes of goods or services, allowing for similar marks to be used where the goods or services offered are not in competition with each other (e.g., the Beatles' "Apple" Records and "Apple" computers--although the respective companies had a clash of views on the subject).
There are "Principal Register" trademarks and "Supplemental Register" marks, with the former being far more preferable, because the remedies from protecting a mark are so much stronger. The owner of a Principal Register mark is presumed by the Court in any infringement action to have a "valid, incontestable" mark, which the challenger is burdened to rebut with a credible showing. To obtain a Principal Register mark, an applicant must avoid use of a generic or descriptive name ("guns" for guns would be rejected, for example), and settle on a unique ("arbitrary and fanciful") or at least suggestive-only name or design. The line between allowably "suggestive" and a disallowed "descriptive" mark is, of course, more of a spectrum, weakening to descriptive. Thus applicants are ordinarily best served by choosing marks at the outset that are indeed unique and as far from generic as possible. If all else fails, as, for example, in the case where a company has long used a mark that is merely descriptive (e.g. "Chinatown Grocery" for a grocery in Chinatown), the applicant may elect to apply for a "Supplemental Register" mark.
Depending on the facts at hand, remedies for trademark infringement include injunctive relief, damages (actual, treble, statutory) and attorneys' fees. In some instances, even seizure and impoundment are possible (e.g., conterfeit goods). |
