The basic rule of trademarks is: First in time, first in right. This means the first person to USE the trademark (not register it) usually has the superior right.
BUT, if a trademark is on the U.S. Principal Trademark Register for five years (and appropriate forms are filed) it may attain “incontestable” status. This may allow you to use the trademark as a “shield,” but not a “sword.”
The U.S. Patent and Trademark Office categorizes trademarks into the following categories, by increasing strength:
Generic trademarks: Cannot be registered;
Descriptive trademarks: May be registered on the Supplemental Register (which does not provide most of the protections of the Principal Register). After five years, if proven to the Trademark Office that the mark has developed “secondary meaning” (i.e., that the public associates the mark with your services only) it may be moved to the Principal Register;
Suggestive trademarks: Words which suggest but do not actually describe the associated product or business. May be registered, but more easily subject to later attack than…
Arbitrary trademarks: Words which have nothing to do with the associated goods or services; or
Fanciful trademarks: Essentially, words which are not found in the dictionary. These are the strongest marks, and easiest to defend.
For example, Nissan Motors could have registered a trademark “Infinity” and it would have been arbitrary because it does not describe or suggest a motor vehicle, but to strengthen the mark further it went with “Infiniti” which is not in the dictionary.
We can help you determine if your proposed trademark is first in time, and how to strengthen it. We handle all aspects of trademark filings, disputes, and litigation. If you are confronted with a legal issue involving trademark, contact us.