Basic Explanation of Trademarks

In layman’s terms, a trademark (or service mark) is a word, phrase, or image that is distinctive to a company or individual and can therefore be used to distinguish the company or individual from others in the market. Via trademark protection laws, a company or individual can prevent others from using its trademark. The trademark could be the company name, the name(s) of one of its well-known products, the company’s catchphrase or slogan, a catchphrase or slogan promoting one of its products, or an image or design that represents the company or one of its products.

Unfortunately, this overly simplistic definition does not capture the complicated nature of trademarks, as American trademark law consists of over 250 pages of details, not to mention various court rulings that further indicate how trademark law should be understood and applied. Therefore, as you might guess, successfully obtaining a trademark in America is not nearly as easy as filling out a basic form. Rather, there is not only a science to filling out trademark applications, but many qualifications your company must meet to successfully acquire a trademark registration (such qualifications are discussed in these documents). The official body in the United States that accepts, rejects, and categorizes trademarks is the United States Patent and Trademark Office (USPTO or PTO). However, the court system is the body that settles trademark disputes, not the PTO.

To actually have a trademark placed into the Principal Register by the USPTO (see our document on the Principal Register for an explanation), the company applying has to prove that in the category to which they’re applying (their “class”), the word, phrase, or image is already associated in the minds of the consumer with their company and their company alone. This is obviously easier for companies that are trying to trademark seemingly made up words like Boeing or Exxon. However, for companies like NewsCorp or MedTronic, which feature a name that somewhat describes their business practice, a stiffer test must be passed to be placed in the Principal Register. For a detailed explanation, please see the document titled “Trademark Applications: The Principal Register.

An important set of terms at the root of understanding trademarks is the difference between “standard character” trademarks and “special form” trademarks. A standard character trademark is just the content of the words, such as Home Depot. This standard character trademark prevents anyone in their industry from calling themselves Home Depot or even a variation, such as The Home Depot Store. On the other hand, a special form trademark is the LOOK of the words in image form. For Home Depot, this would include their orange color, the 45 degree slant of their logo, and the square shape of their logo. This type of trademark prevents another company in their class / category from using their design, even if that that company were to change the name to something unrelated like, “Property Building Store”. In other words, a standard character trademark is the wording, whereas a special form trademark is the artistic aspect. They are two different types of trademarks, and companies with distinct words and distinct designs will often apply for two trademarks in order to secure protection of both. Please keep in mind that Web Defense Systems searches for and protects both standard character trademarks and special form trademarks.

On a historical note, trademark law in the United States dates back to the late 1800s, but the most important legislation concerning trademarks came in 1946, with the implementation of the Lanham Act.

Disclaimer: The purpose of our “Knowledge Base” documents is to explain the basics of the subject matter in question and to provide some rationale behind the actions that Web Defense Systems might take on behalf of our clients. We are not lawyers, and the preceding information should not be used in lieu of legal advice.