Trademark Development Policies

by Victoria McGrath
Congress passed the Trademark Act of 1946 to establish uniform trademark policies.

Congress passed the Trademark Act of 1946 to establish uniform trademark policies.

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Many businesses, corporations, governments and universities establish trademark development policies based on federal trademark law and governmental policies. Clear development policies extend from the federal level down to the corporate level. Well-defined policies help prospective trademark owners develop and maintain legally recognized and protected trademarks. Trademarks found to meet the legal standard entitle owners to establish exclusive ownership rights in the distinguishing mark. Trademark development policies address issues in development of a unique mark, comprehensive searches of trademark registration databases and the federal registration process.

Definition

Trademark development policies start with a uniform understanding of a trademark or service mark. The United States Patent and Trademark Office (USPTO) defines a trademark as a specific “word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.” A service mark refers to services as opposed to goods. The development, use and registration of a “trademark” may refer to both trademarks and service marks.

Federal Laws and Policies

Federal trademark law governs trademark development policies at the federal, state and local level. The federal law includes common law, legislative law and case law. Congress enacted the Trademark Act of 1946 to create a legal standard of acceptable marks and establish a registration system. The Act applies to all trademarks used commercially within the United States, with or without federal or state registration. Federal registration under the Act helps prevent confusion between competing trademarks.

Trademark Law Prohibitions

Trademark development policies include prohibitions on the use of certain types of marks as trademarks. Under federal trademark law, a trademark must consist of more that a simple description of the goods or services, a surname, a geographic location or an ornamental term. A trademark must not create a “likelihood of confusion,” appear to be “merely descriptive or deceptively misdescriptive,” consist of “primarily merely a surname” or exhibit pure “ornamentation.”

Trademark Case Law

Trademark development policies help prospective owners avoid legal challenges over the use of trademarks. In trademark legal cases, the courts categorize trademarks in four ways, as "arbitrary and fanciful, suggestive, descriptive or generic." A majority of arbitrary and fanciful marks qualify as valid trademarks because they clearly identify the goods and services of the owner, without a likelihood of confusion. The court accepts suggestive marks that include more than a mere description. Purely descriptive or generic marks create more legal challenges to overcome because vague or generic marks often fail to identify the goods or services of a specific provider.

Trademark Database Searches

Trademark development requires strict adherence to governing policies. Any design, search or filing errors can result in the loss of exclusive ownership rights of the trademark.The United States Patent and Trademark Office recommends a comprehensive search of trademark registration databases to ensure the uniqueness of a proposed new trademark. The federal Trademark Electronic Search System (TESS) includes active and inactive federally registered trademarks and service marks.