What a Trademark Is. Under the modern definition of the term “trademark,” both state common law and federal law follow the definition set forth in the federal Lanham Act: a trademark is a designation used “to identify and distinguish” the source of goods and services of a person or company. The role that a designation must play to become a “trademark” is to identify the source of one seller's goods and distinguish that source from other sources. If the designation performs that role, then the law deems it to be “distinctive” and legally protectable.
What Kind of Designations Can Qualify? The traditional and usual kind of designations that serve the role of a trademark consist of any of the following:
One or more letters;
An image, shape or color; and even
A sound, fragrance or flavor.
Trademarks and Service Marks. Often, the term “trademark” is also used to refer to any designation used to identify services as well as goods. However, such marks are more specifically labelled “service marks.” For example, the federal Lanham Act defines a service mark as: “a mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others.” Since the legal requirements for both trademarks and service marks are essentially the same, they are both referred to as “trademarks” unless different rules apply to each. Collective Marks and Certification Marks are very different and, in the case of the latter, are used when one party is certifying that the services of another meet or conform to certain standards.
Trademarks and Trade Dress. “Trade dress” is very similar to a “trademark” and usually consists of product packaging or product shape and design that serves the same role as a trademark: to identify and distinguish the goods of one seller.
A Three Part Test. The requirements for qualification of a word or symbol as a trademark can be broken down into three elements:
The tangible symbol;
The type of use; and
The purpose (to identify and distinguish the seller's goods).
Inherent and Acquired Distinctiveness. In determining what can qualify as a trademark, it is crucial that the designation in question perform the job of identifying and distinguishing the goods or services with which the symbol appears. In the language of trademark law, if the designation performs that job, then it is “distinctive.”
Designations that are placed in the “inherently distinctive” category are regarded as capable of serving immediately upon first use as a legally recognized symbol of origin—that is, as a “trademark.” Inherently distinctive marks are legally protectable immediately upon first use. Fanciful, arbitrary and suggestive words used as marks are regarded as being “inherently distinctive.” Whether non-word designations (such as logos, images, packaging and product designs) are inherently distinctive or not is judged by guidelines which are appropriate for the world of images and designs.
Some designations are regarded as not being inherently distinctive in a trademark sense. For example, a word or image that directly describes a product or service is in the “descriptive” category, is not inherently distinctive and ownership is acquired only by the acquisition of distinctiveness—which is called acquiring a “secondary meaning.” Words are in the “descriptive” category because they directly describe the nature or quality of the product, identify its geographical source, or identify the name of the person that makes or sells the goods.
State of Florida Trademarks. A trademark can also be registered on the State level. In the State of Florida, this is done through the Florida Secretary of State’s Office. A state trademark registration is not the same when compared to a federal registration issued by the US Patent and Trademark Office.
A Trademark is not the same as a business name. Registering a proposed trademark name in the form of a corporate name in Florida is not the same as a trademark, and does not provide trademark protection.