What are the differences between federal trademarks, federal service marks, state entity names, and state trade names? Generally, a federal trademark is used to denote the origin or source of a particular good while a federal service mark is used to denote the origin or source of a particular service; however, a state entity name is used to denote the legal entity that is offering the good or service.
Perhaps the best method to clarify the difference between federal trademarks/service marks, and state entity names is in terms of grammar: federal trademarks/service marks are often adjectives while state entity names are always nouns. For example:
This Dell computer was made by Dell Inc.
The former reference to "Dell" is to a federal trademark, while the latter reference is to a state entity name.
What about state trade names, though? And state trademarks, for that matter? Well, that's where things start to get murkier. In Arizona, a trademark is a logo or tag line. Moreover, a trade name in Arizona is similar to a d/b/a, i.e. "doing business as." To add to the confusion, businesses operating in Arizona may file trade name registrations for limited liability entity names. A.R.S. § 44-1460(A).
Federal Trademarks & Service marks: From Fanciful to Generic
The amount of protection conferred upon a federal trademark/service mark is dependent upon how distinctive the mark is from competitors' marks and from everyday speech. Those marks that are the most distinctive receive significant protection that, unlike a patent or copyright, is not of limited duration. The following is a list of categories, in descending order, according the amount of protection with which a mark is provided.
Fanciful Marks
Marks that are very unique and not used in normal speech are called fanciful marks.
A good example of a fanciful mark is that of Verizon as used to denote the communications-related goods and services offered by Verizon Communications Inc. The mark Verizon likely had no meaning before it was used as a mark for Verizon Communications Inc.
Other examples of fanciful marks include Starkbucks, Exxon, and Xerox.
Arbitrary Marks
Marks that are completely abstracted from the goods/services with which they are associated are called arbitrary marks.
A good example of an arbitrary mark is that of Apple as used to denote the technology-related goods and services offered by Apple Inc. The products sold by Apple Inc. under the mark Apple are not associated with the sale of fruit, let alone food, as might be expected for a product or service using such a mark.
Other examples of arbitrary marks include Chevron, Amazon, Adobe, and Sun.
Suggestive Marks
Marks that intimate or allude to a good or service but are still somewhat abstracted from the types of goods and services with which they are associated are called suggestive marks.
A good example of a suggestive mark is that of Mustang as used to denote the car manufactured by Ford Motor Company. Although Mustang does suggest a product or service that may be fast and powerful, the word Mustang alone isn't exclusive to the muscle car; rather, it could also refer to a horse.
Other examples of suggestive marks include Blu-Ray, Liquid Paper, & Caterpillar.
Descriptive Marks
Marks that are descriptive of the particular features, qualities, characteristics, or purposes of the goods and services with which they are associated are called descriptive marks.
Before descriptive marks are afforded trademark/service mark protection, however, they must attain "secondary meaning".
A mark generally attains secondary meaning after a long period of time (although there is no specific minimum required) and extensive advertising so that the mark becomes recognizable as associated with the source or origin of the product or service. In Kellogg Co. v. National Biscuit Co. (305 U.S. 111), the. U.S. Supreme Court articulated the following requirement as to secondary meaning: "It must show that the primary significance of the term in the minds of the consuming public is not the product but the producer."
A good example of a descriptive mark that has attained secondary meaning is the mark Windows as used to denote the operating systems and related software developed by Microsoft Corporation. The mark Windows is descriptive of an attribute of the graphical user interface implemented in the operating system. Further, the mark Windows, in the context of software, is likely synonymous with Microsoft Corporation.
Generic Terms
Terms that are descriptive of a class of goods and services with which they are associated are called generic terms and are afforded no trademark or service mark protection. Such terms identify the actual goods or services as opposed to the source or origin of such goods or services, e.g. car, milk, or water.
Given the substantial variation in terms of protect-ability, based upon distinctiveness, it is likely wise to analyze the distinctiveness of a mark, in addition to the other more common considerations, when to selecting a trademark or service mark.
State Entity Names
Unlike trademarks and service marks, which can be registered at the federal level, there is no federal register of state entity names. As such, state entity names — by themselves — are only protected by state law. While this may seem problematic, it often isn't because the protections granted to a particular federal trademark/service mark are applicable to a federal trademark/service mark included in an entity name.
This brief overview of some important considerations associated with federal trademark and service mark law and state trade name law is by no means comprehensive. Always seek the advice of a competent professional when making important financial and legal decisions.
Douglas K Cook is an Arizona business attorney with over 40 years of experience as a practicing attorney. Although Douglas K Cook's office is located in Mesa, Arizona, he represents clients throughout the Phoenix, Arizona Metropolitan area including the following east valley cities: Scottsdale, Paradise Valley, Tempe, Chandler, & Gilbert.
