Summary of Trademark Law
This section contains a discussion of
trademark law, and is designed to enable those who are interested
to gain greater understanding of the concepts and principles
which form the legal basis for SPARC International's trademark
program. Although this material has been prepared by SPARC International's
legal counsel, it is not intended to address specific questions
about particular trademark matters which arise at member companies.
You should consult directly with the responsible attorney at
your company in dealing with such issues.
What is a Trademark?
Perhaps the best way to introduce
trademark law is by defining the term "trademark"
itself. In both a legal sense and according to the dictionary,
a trademark can be defined as: a word (or words), a name
(or names), acronym, slogan, graphical symbol, device,
or even a melody or fragrance -- or any combination of
these elements -- that has been adopted by a manufacturer
or retailer for use in connection with its products to
identify their origin and to differentiate them from the
products of competitors.
Weak and Strong Trademarks
As a general rule, the authorization
of new SPARC trademarks is the prerogative of SPARC International
which will evaluate a potential mark by its suggestiveness,
sound, uniqueness, and customer appeal. However, the exercise
of selecting new trademarks can turn into a legal nightmare
if the implications of trademark law are not also a part
of this selection criteria. For example, an improperly
selected trademark may be unenforceable against subsequent
users and may, in fact, be enjoined (i.e., prohibited
from further use). Unfortunately, legal entanglements
often surface only after considerable financial and marketing
effort has been invested in a selected trademark and only
after the mark has begun to achieve wide customer recognition.
One of the primary objectives of this discussion is to
provide a reasonably comprehensive review of trademark
law so that SPARC International members considering the
adoption of new trademarks will select distinct and viable
It is a fundamental of trademark
law that the first user of a particular trademark has "priority"
over all others who might later seek to use that mark (or
a confusingly similar mark) in conjunction with similar
goods or services. Such a trademark -- if it has never been
used before by any other company -- is said to be "unique".
Unique marks are "strong" marks in the sense that
(by definition) they will not cause consumer confusion in
the marketplace. Unfortunately, unique trademarks are becoming
increasingly rare as the catalogue of marks in commercial
use continues to grow.
Being the first to use a particular
trademark is not an absolute guarantee of trademark strength.
The actual meaning, form, and content of the trademark itself
will also greatly affect its legal viability. This is to
say that trademarks should be selected with an eye to their
inherent distinctiveness. The courts have determined that
the more "distinctive" a trademark is, the greater
protection it will be given. The courts grant greater protection
to distinct trademarks because distinct marks best serve
the consuming public in making purchasing decisions and
in avoiding marketplace confusion. Depending on relative
distinctiveness, trademarks will receive different degrees
of protection ranging from legally "unassailable"
to legally "unavailable".
The following is a hierarchy of the
more commonly recognized categories of trademark distinctiveness
arranged from the strongest marks to the weakest. Strong
marks will receive a higher level of protection against
potential infringement than will relatively weak marks.
To the fullest extent possible (or commercially feasible),
SPARC trademarks should be selected from within the strongest
Fanciful trademarks are marks that in and of themselves
have no meaning -- either as words (in English or any other
language), phonetic equivalents or as abbreviations. Fanciful
trademarks are often called "coined" marks because
they are created (or minted) without reference to a dictionary,
textbook, or any other source. Fanciful trademarks are the
most distinctive and therefore the strongest possible marks
and will be afforded the greatest legal protection. Examples
of fanciful marks include: "Exxon", "Kodak",
Arbitrary trademarks are composed of words, phrases, or
abbreviations that may be found in commonly available sources
such as dictionaries or textbooks and which have easily
understood meanings. However, these meanings have no relationship
to the products or services with which they are associated.
Arbitrary trademarks are also considered by the courts to
be distinctive marks and they will also receive extensive
legal protection. Examples of arbitrary marks include: "Apple",
"Sun", and "Lotus".
Like arbitrary trademarks, suggestive trademarks are composed
of words, phrases, abbreviations, etc. which have well defined
meanings. However, unlike arbitrary trademarks, these meanings
are considered to be at least indirectly descriptive (or
" suggestive") of some feature of the product
or service. But, some exercise of the imagination is still
required to mentally connect the mark to the product or
service. Although suggestive marks are also accepted and
enforced by the courts, they are more frequently subject
to legal challenge by third parties. Examples of suggestive
marks include: "Intel", "Wordstar",
"Dbase II" and "Wordperfect".
Descriptive trademarks are composed of words, phrases, abbreviations,
etc. that have specific meanings. However, unlike arbitrary
or suggestive marks, these meanings describe some salient
feature of the relevant product or service. Descriptive
marks are considered to be weak and only become legally
enforceable after years of use. Examples of such trademarks
include "National Semiconductor" and "General
Strictly speaking, generic marks are not true trademarks
at all. In fact, generic marks are terms that have eventually
become a part of the common vernacular to describe the very
products that they once sought to distinguish. Thus, generic
"trademarks" are the proverbial "bone yard"
for once viable and even quite strong trademarks that were
lost through neglect, misuse and/or abuse. Good examples
of generic marks are: "aspirin", "cellophane",
"escalator", "harmonica", "linoleum",
"trampoline", "yo-yo", "zipper",
and more recently the "386".
Properly Maintaining Trademarks
The best way to protect trademarks
is to use them -- and that means both to use them widely
and to use them wisely. Probably the most common means
by which trademarks can be lost are through lack of use
(or "abandonment" in the parlance of trademark
law) or through misuse. The loss of a trademark due to
abandonment is easy to understand. The courts will not
prevent the adoption of a mark by a subsequent user if
the original user no longer utilizes the mark. However,
the loss of a trademark through misuse is not quite so
straightforward. Basically, a trademark will receive the
widest possible protection from the courts if it is used
in compliance with a few simple but hard-and-fast rules
of proper usage. For ease of reference, these "rules
of usage" have been distilled into the following:
- Rule 1: When a trademark is used
in printed materials, always distinguish the mark in
relation to other words in the body of the text. The
objective of this rule is to emphasize the trademark
so as to enhance its visibility. To this end, trademarks
are frequently distinguished by being printed in capital
letters within the text of a document.
- Always adhere strictly to the use
of the correct form of a trademark. This rule should
be followed whether the trademark is an acronym, a word,
words or a graphic design. Accordingly, verbal trademarks
should not be modified by abbreviations, translations
or connection (by a hyphen or otherwise) to other words
or trademarks. All logos should be reproduced in strict
compliance with the established graphical form and in
the correct colors.
- Always use the trademark as an uninvested
(i.e. unaltered) adjective. In other words, a trademark
should not be used as either a noun or a verb in a sentence.
Nor should a trademark be made into a plural, a possessive,
or otherwise modified. Thus, a trademark should be used
only as an adjective which is followed by the "generic"
noun best describing the product or service to which
it refers. In summary, a distinct trademark of long
standing and proper use is granted almost absolute legal
protection. The key to proper trademark usage lies in
"consistency". If a trademark is used consistently
and correctly -- with the same spelling and in the same
grammatical format -- that mark's strength will not
be diluted and, in fact, will grow over time. By contrast,
a descriptive or improperly used trademark is granted
little if any protection. This result follows in large
part from the value that a particular trademark has
or can be expected to acquire in the consuming public's
decision-making processes when evaluating competing
products. It should be remembered that the object of
the law on this subject is to protect the consumer and
not to protect the trademark itself.
Registration of Trademarks
In the United States, trademark
rights are acquired from the moment marked products
enter into the stream of commerce (i.e., are first
sold). These "automatic" trademark rights
are granted as "common law" rights (that
is, they are not derived from statutory laws but are
based on a long series of court decisions). Although
these common law trademark rights do not require a
formal act of trademark "registration" to
become enforceable, the legal protection these marks
will receive is much less certain and not nearly as
broad as those secured via formal registration of
the mark. As a practical matter, federal registration
of a trademark provides the best means of protection
Federal protection of trademarks
can only be achieved through the formal registration
of a mark with the U.S. Patent and Trademark Office
(the "PTO"). Although federal trademark
registration provides the trademark owner with many
valuable rights, securing these rights is sometimes
a difficult, time-consuming and costly task. In large
part, the difficulty in achieving federal trademark
registration lies in the requirement that the PTO
carefully scrutinize trademark applications to determine
each mark's uniqueness, distinctiveness and suitability
for use in commerce. In fact, it has recently been
estimated that over 80% of the applications filed
for federal trademark registration are initially rejected
by the PTO. However, the proper selection of distinctive
trademarks can greatly enhance the chances of achieving
a satisfactory and economical federal registration.
As a rule, the greater the ingenuity and deliberation
required to associate the trademark with the product
or service, the easier the task of registering that
mark will be.
Federal trademark registration is
initiated when a formal application and the requisite
filing fee are submitted to the PTO. Registration
will be granted if the examiners in the PTO determine
that the trademark applied for: (i) is not confusingly
similar to an already registered trademark, (ii) is
reasonably distinctive, and (iii) complies with certain
specific statutory requirements as to content. The
statutory content requirements prohibit the registration
of trademarks that are misdescriptive, deceptive,
scandalous or falsely suggest a connection to well
known persons or institutions.
As a matter of statutory procedure,
before formally registering a trademark, the PTO will
publish the mark for "opposition". If the
trademark remains unopposed during this opposition
period (30 days) by any persons or corporations who
might object to its use, the mark will be "allowed"
and entered in the so called "Principal Register"
of the PTO. Federal registration of a trademark is
subsequently attained when the PTO issues the trademark
owner a "Certificate of Registration". The
"Certificate of Registration" will grant
the trademark owner the exclusive right to use the
mark with respect to certain categories or classes
of goods and services designated by the owner. In
the United States there are 42 classifications for
goods and services, ranging from chemicals to computers.
SPARC trademarks are commonly registered in classes
9, 16 and 42 which cover computers and software, manuals
and services respectively.
A trademark that has been
accepted by the PTO for publication in the Principal
Register will provide the owner and its licensees
with numerous legal advantages in preventing subsequent
infringement of the mark. Among the more important
- First, federal registration puts
all potential infringers on notice that the trademark
has been claimed. Thus, the courts will not look
favorably on an argument that a subsequent user
(i.e., infringer) innocently adopted the mark.
- Second, the mark is given a presumption
of validity if later challenged in court. If the
PTO has accepted a mark for registration, arguments
by others that the mark is overly "descriptive",
- Third, registration entitles
the owner to sue in the federal court system to
protect the mark. Without prior federal registration,
a trademark owner can only resort to state courts
to enforce or preserve a mark and, as a general
rule, the remedies available for trademark infringement
in state courts are limited.
- Fourth, registration entitles
the owner to recover lost profits, damages (treble
damages if the infringement is determined to have
been willful), the costs of litigation, and even
criminal penalties (where counterfeiting is proven).
- Lastly, registration enables
the trademark owner to have the U.S. Customs stop
the importation of goods bearing an infringing mark
and to order such goods destroyed.
At the end of five years of unchallenged
federal registration on the Principal Register, a
registered trademark achieves legally "incontestable"
status and is no longer subject to challenge by third
parties. A registered trademark will remain protected
for a term of ten years (provided that the owner offers
the PTO the occasional required proof of continued
use). After the expiration of the initial ten-year
registration period, registration may be repeatedly
renewed for subsequent ten-year periods (for as long
as the owner continues to use the mark).
Prior to 1988, federal registration
of trademarks could only be applied for after the
mark had been used in interstate commerce. Unfortunately,
if problems arose during the registration process,
valuable time, energy and investment in an unregisterable
mark might be wasted before the PTO made its final
decision. Now, however, applications for federal registration
can be filed with the PTO before the mark has actually
been used. Under new " intent to use" registration
provisions, a trademark owner can seek registration
(and subsequent publication for opposition) prior
to investing heavily in the marketing effort associated
with a trademark that may ultimately be either unregisterable
or strenuously opposed by one or more competitors.
The "intent to use" registration procedure
will reserve a trademark for up to three years before
proof of actual use will be required to complete registration.
Members planning to develop new marks may want to
consider utilizing these "intent to use"
Registration of a trademark is also
possible on the PTO's "Supplemental Register."
Although registration on the Supplemental Register
is more easily obtained from the PTO because there
is minimal review of the mark by the PTO examiners,
the ensuing legal protections are much less expansive
than those afforded to marks appearing in the Principal
Register. Therefore, in general, SPARC International
does not seek to register its trademarks by requesting
a listing in the Supplemental Register.
The Proper Marking of Trademarks
As explained earlier, a trademark
owner gains certain "common law" rights
to a mark commencing immediately upon first use of
the mark. To enhance the enforceability of these common
law trademark rights, and to put potential infringers
on notice that the trademark has been claimed, an
unregistered trademark should always be followed with
the superscript "TM". However, the use of this superscript
is not required each and every time the mark is used
throughout a printed publication. It is only a requirement
that the superscript be used when the mark first appears
within the body of the written text. Additionally,
a clear annotation or footnote located in a convenient
spot (following the text in a printed publication
or in a lower corner of advertising literature) should
specifically attribute ownership of the mark.
A federally registered trademark
(and only a federally registered trademark) should
be followed by the statutory trademark notice symbol
"®". As with unregistered trademarks,
the superscript need be used only with the trademark
when first encountered in the body of the written
text. Additionally, as with the common law superscript
"TM", a footnote should indicate that the trademark
has been registered by the owner. Using the symbol
"®" as a superscript with a trademark
that is not listed on the Principal Register is a
Because the proper marking of a
trademark is so important to trademark law, another
rule of trademark usage is in order:
a trademark is first encountered in the text of a
document or wherever a mark used in isolation on product
packaging or advertising literature, it should be
followed by the appropriate superscript (the "TM"
for unregistered marks or the "®" for
registered marks). Additionally, a footnote, conveniently
located somewhere on the document or in the text,
should attribute the trademark to its owner. For example,
if the registered trademark "XYZ" were used
in the text of a printed article, it would be written
"XYZ®" when first used and be followed
by a footnote to the effect that "XYZ is a registered
trademark of XYZ Company, Inc."
International Trademark Registration
many foreign countries require the identification
of trademarks with symbols other than the "®"
or "TM" superscript used in the United States.
For example, in many Latin American countries the
superscript indicating trademark registration is "MR"
for "Marca Registrada" and use of the "®"
is of no significance. Thus, for labels, packaging,
advertising literature, etc. prepared for use in specific
foreign countries, you may wish to consult your counsel.
Selecting New Trademarks
Care in selecting a new trademark
should focus on two overlapping areas of general concern
(one area is the marketing appeal of the mark and
the other area is the legal viability of the mark).
From a sales and marketing perspective, a trademark
should be selected based on a number of business and
grammatical criteria including:
- being easy to read
- being easy to remember
- not being confusingly
similar to the marks of others
- having positive implications
for the product
- being consistent
with previously adopted SPARC trademarks
Special consideration should
be given to choosing trademarks that fit within SPARC
International's already selected trademark styles
and patterns. As explained previously in this booklet,
a trademark should be selected only if it is both
"unique" and "distinctive". The
most desirable trademarks are coined marks or marks
that rank high on the so called " distinctiveness
scale" set forth in the previous section.
Protecting Treademark Rights
Since trademarks are by law indicators
of the origin of the goods they designate, it is essential
that SPARC International maintain control over the
use of its trademarks. Thus, SPARC International will
grant member companies permission to use its trademarks
only under license.
SPARC International licenses members
to use its trademarks provided certain legal requirements
are observed. For instance, in all SPARC trademark
licenses the member has: (i) acknowledged the validity
of the SPARC trademarks, (ii) agreed not to use deceptively
similar marks of its own, and (iii) agreed to use
the SPARC marks only in accordance with the guidelines
set forth in this booklet. Perhaps most importantly,
in each of these licenses, SPARC International has
retained a solid element of control over the quality
of the products with which the marks will be used.
Because SPARC trademarks are a "stamp of quality,"
the use of SPARC trademarks on promotional materials
must be approved in advance by SPARC International.
It should be mentioned that not
all uses of the SPARC trademark by others will require
prior authorization. For example, one-time use of
one or more SPARC trademarks in third party advertising,
literature, professional articles, news releases,
etc. will not normally be opposed by SPARC. However,
when a SPARC trademark is used by others, the use
of the mark must nonetheless follow the rules of trademark
usage set forth in this booklet. It is especially
important (as a legal matter) that the use of SPARC
trademarks by others be noted with both the appropriate
trademark symbol and the corresponding footnote attributing
the trademark ownership to SPARC International.
All member organization employees
should remain vigilant to the misuse of SPARC trademarks
by others. Additionally, members should also remain
alert to the use by others of trademarks that are,
or appear to be, confusingly similar to any SPARC
trademarks. Any member who becomes aware of an unauthorized
or incorrect use of a SPARC trademark should immediately
notify SPARC International so that appropriate corrective
action may be taken.