Minneapolis Trademark Lawyer

Trademark Protection

A trademark refers to a name, phrase or symbols that represent a product to identify and distinguish it from others in the marketplace. Similarly, service marks are used to identify services rather than products.

Trademark protection is an invaluable tool to establish and build a brand, as it enables consumers to quickly identify the source of a given product or service. Trademarks also provide companies with an incentive to invest in the quality of their goods in order to maintain and expand their brand position in the marketplace.

There are strict guidelines for the application requirements – and legal protection granted – various types of trademarks. Marks are generally grouped into four categories based on the relationship between the mark and the underlying product: arbitrary or fanciful, suggestive, descriptive, or generic.

Trademark Categories

An arbitrary or fanciful mark, the Nike "swoosh" for example, is one that bears no logical or direct relationship to the underlying product. Highly distinctive, they are provided the highest degree of trademark protection. Coined names (Exxon, Kodak, etc.) also fall into this category.

A suggestive mark evokes or suggests a characteristic of the underlying product, but does not specifically describe it. For example, the 'Diehard' moniker for a car battery suggests, but does not explicitly mean, longevity. Like arbitrary or fanciful marks, suggestive marks are inherently distinctive and are afforded a high degree of trademark protection.

A descriptive mark describes something about the product or service without identifying its source, as in ‘Frosted Mini Wheats’. As they are often the easiest to market, they are used extensively by businesses despite inherent difficulties in obtaining trademark protection. Descriptive marks are not granted Trademark rights unless they acquire "secondary meaning, ” which occurs only when the particular term is widely recognized as signifying a particular brand, ( i.e., International Business Machines.) Companies seeking to establish secondary meaning do so only through the extensive use and promotion of the particular descriptive mark.

A Generic "mark" – which describes the general category to which the underlying product belongs (i.e. “computer”) – is not afforded trademark protection because it describes an entire group of goods or services. Even if secondary meaning can be proven, a generic mark can not obtain trademark protection.

Holders of valid trademarks must be vigilant not to allow their mark to evolve into a generic name by becoming synonymous with others' goods or services, such as ‘Aspirin’ or ‘Thermos’. Owners of brand names that are at risk of becoming generic descriptors – such as Kleenex – must diligently protect their intellectual property rights through widespread advertising and by ensuring the correct use of their marks.

Trademark rights can be acquired in one of two ways: by being the first to use the mark in commerce or by being the first to register the mark with the U.S. Patent and Trademark Office. Trademarks rights must be maintained through actual lawful use of the trademark, precluding companies from “stockpiling” names, phrases or symbols with future potential.

An unregistered mark may be protectable only in the geographical area in which it has been used or might reasonably be expected to expand. If registered, it is much easier for the trademark owner to demonstrate and enforce trademark rights.

Contact Experienced Trademark Attorneys

For advice on all aspects of the filing and protection of federal and state trademarks, and international trademark law, contact the experienced Minneapolis trademark lawyers of the Skjold ▪ Barthel firm at 612.746.2560.

T. Michael Davis, Esq. leads our international and intellectual property division through the licensed trademark Scandia-Germania, the Skjold ▪ Barthel law firm is well-prepared to assist in branding, licensing, introducing and protecting intellectual property portfolios in markets across North America, Scandinavia, and Central Europe. Visit our site for more detail regarding our international capabilities.