The policy behind trademark law is to help consumers identify the source of the product they are purchasing. Therefore, trademark rights grant the holder of the trademark the sole right to use any identifying word, symbol, or phrase associated with the product they sell. In cases where a certain feature — a color, for example — of a product is uniquely associated with that product, then trademark rights can extend to that feature in what is called “trade dress.” Lastly, if it is a service rather than a good in which a person or company has trademark rights, then it is called a “service mark,” though it is treated the same way under the law as a trademark.
The strength of trademark rights depend on how distinctive the trademark is. There are four levels of strength: arbitrary or fanciful, suggestive, descriptive and generic. An “arbitrary or fanciful” trademark means that the word does not directly relate to the product, such as a computer company being named after a type of fruit. A “generic” mark is on the opposite site of the spectrum — a company that sells fruit being named after a type of fruit would be an example of a generic mark. Arbitrary or fanciful trademarks are the strongest trademarks, and generic trademarks receive no trademark rights. Suggestive and descriptive trademarks fall somewhere between the two.
Trademark rights can be lost through abandonment, through assignment or if the trademark becomes generic. Abandonment occurs when the holder of trademark rights ceases use of the trademark in commerce with the inferred intent not to resume use. Improper assignment occurs when the trademark holder assigns his rights in the trademark to another party and does not maintain supervision over the assignee’s use of the trademark. A trademark becomes generic when, in the minds of the public, the name of the product is associated with the kind of product itself rather than the source of the product.
A holder of trademark rights can successfully sue someone for infringement of their rights if the alleged infringer uses the trademark in a way that causes a “likelihood of confusion” to consumers regarding the source of the product. The most important factors in determining whether there is a likelihood of confusion are the strength of the trademark, the similarity of the goods and the trademarks used and evidence of actual confusion. Less important factors considered by courts in determining whether there is a likelihood of confusion are the similarity of the marketing channels used, the degree of caution used by the average purchaser and the inferred intent of the alleged infringer.
