The following article appears in the journal JOM, 44 (3) (1992), p. 49. JOM is a publication of The Minerals, Metals & Materials Society

Selecting, Using, and Maintaining Trademarks

The selection and proper use of trademarks can be of utmost importance to any firm that deals with the public. If a trademark is not carefully selected at the outset, it may be of little value to the firm using it. If the trademark is not correctly used after it has been adopted, the trade-mark owner may lose valuable rights.

The starting point in selecting a trademark is to recognize the nature of a trademark. A trademark is an arbitrary sign or symbol which distinguishes the goods of one proprietor from the goods of all others. It cannot be said too often that a trademark must be arbitrary. If the mark is not arbitrary, then it identifies the nature of the goods instead of the source of the goods. A service mark is like a trademark, but it identifies services instead of goods. Some marks serve both purposes. The legal principles relating to service marks are the same as those that relate to trademarks.

One type of trademark is one that is coined and fanciful. In other words, the mark has been devised or invented for the purpose of identifying the goods. Such a mark has no meaning beyond indicating the origin of the product to which it is applied. Well-known marks in this category include "Kodak," "Exxon," and "Xerox."

Another type of mark is an arbitrary mark. Here, a word in common use is applied to a product or service unrelated to its meaning. It is well known, for example, that a camel is a beast of burden. When applied to tobacco products, however, "Camel" identifies a particular type of cigarette. In this sense, the usage of "Camel" is entirely arbitrary and has no meaning. Other examples of arbitrary marks include Old Crow whiskey and Ivory soap.

There are also suggestive and descriptive marks. The fommer are suggestive of the goods themselves. Such marks are recognized as trademarks, but they are often weak. Similarly, a descriptive mark describes the product to the customer; it does not identify the source of the product. Laudatory marks such as "superior," "premier," and "prime"—which suggest the quality of the goods—are usually considered descriptive. The distinction between suggestive and descriptive marks is often shadowy and usually turns on specific facts.

A trademark that is weak or even descriptive can sometimes acquire a secondary meaning. For example, a mark that is initially suggestive of the product may acquire a secondary meaning through established use and recognition by the public. In other words, through long-established and exclusive use of a mark, the purchasing public may come to associate an initially weak mark with a particular source.

In selecting a new trademark, it is usually considered best to pick either a mark that is coined and fanciful or a mark that is arbitrary. Preferably, the mark should be one that can be easily remembered by the public. Further, it should not offend purchasers or be susceptible to misunderstanding or misinterpretation. It is sometimes said that a good trademark is one with predominantly hard consonant sounds, thereby having only one possible pronunciation and making it easier for the public to remember. For firms that engage in international trade, it is important to be aware that some acceptable English words can be derogatory or demeaning in other languages. Therefore, it is critical that the mark be free of hidden meaning or innuendo in the language of the country to which the product is shipped.

After a proposed mark has been selected, a full trademark search of the public records should be made to identify potential conflicts with existing trademarks. A good trademark search will identify potential conflicts with existing federal registrations, pending applications for federal registration, and issued state trademark registrations. Tradename and directory searches are intended to discover any uses under a conflicting tradename that has not been the subject of trademark registration. Frequently, a search will identify one or more instances of potential conflict. Accordingly, the need for an adequate search should never be underestimated.

If the search clears the proposed mark, an application for registration should be filed as promptly as possible. If the mark has not yet been used in interstate commerce, and if such use is intended, an application for federal registration may be filed based on the intention to use the mark. If the mark has already been used in interstate commerce, the application for registration will be based on actual use. Delay in filing an application for registration may be prejudicial if another individual should file and obtain registration of the same or a confusingly similar mark.

After a trademark has been adopted and put into use, care must be taken to maintain the trademark as a badge of origin for a single source or a particular brand of goods. In all uses of the trademark, it should be remembered that the trademark is used as an adjective to identify a particular brand of product. If the trademark becomes a noun, then it will be lost and competitors may lawfully use the mark to describe the product.

Over the years, a number of wellknown words have originated as trademarks and become generic descriptions of the products through either customer use or misuse by the trademark owner. Former trademarks that are now in the publicdomain include such coined words as "nylon," "cellophane," and "aspirin."

However, when a trademark is carefully selected and when the owner of the mark takes precautions to avoid misuse, the trademark can be of great value for as long as it is used.