Different Categories of Trademarks

For many businesses, establishing a well-known brand is the key to success. Of course, you need to protect that brand and trademarks are part of the process.

A trademark is a form of intellectual property. You can trademark words, symbols, names, sounds and even colors that distinguish a product or service. A classic example is the Nike swoosh, a symbol that is well known throughout the world. Unlike patents and copyright, trademarks do not expire so long as they are used and, of course, you pay the United States Patent and Trademark Office to renew them!

When the word trademark is mentioned, most people think it is one thing. In truth, there are variations of trademarks. They differ in a number of ways, so let's take a closer look.

We'll start with a service mark. There seems to be a lot of confusion regarding the service mark. It is exactly like a trademark with one noticeable exception. As the name suggests, it applies to names, symbols and so on that identify a service instead of a product. This brings up an important point. The type of trademark for your situation is based on the underlying thing it represents.

The classic trademark is next. Again, we are talking about a symbol, word, name, sound and so on that identifies and distinguishes something in the consumer mind. In this case, we are talking about a product or products. Coca Cola is one of the dominant trademarks of all time. If the phrase is mentioned, you know exactly what it is referring to.

Both service and trademarks have some limitations. When you obtain a mark, it does not extend across all possible forms of commerce. Instead, you have to indicate what class of industry, commerce or business it should apply to. Ultimately, this means a business cannot hog a particular phrase. An example will make this clear.

The biggest online bookstore is Amazon. When talking about books or the internet, the mention of Amazon clearly leads you to think about their site. Does this mean there can be know other Amazon businesses in the world? Of course, not. There simply cannot be another online bookstore called Amazon. If I want to open an Amazon Travel business that sends people to the Amazon in South America, I am not going to have any problems.

All and all, trademarks are a fairly simple part of the law. If you wish to protect your products or services, you should definitely consider applying for the appropriate marks.

Gerard Simington is with FindAnAttorneyForMe.com - free daily legal tips.

Choosing a Trademark: A Couple of Important Considerations

If you are thinking about starting up a new business or introducing a new product or service to the market, one of the last things you may have considered is seeking trademark protection for the name of your business, product or service. However, the importance of selecting a trademark cannot be emphasized enough. Often times the trademark you choose will play a role in shaping the consumer's first impression of the product or service offered by your company. This article will discuss some of the important issues associated with choosing a trademark for your business, product or service.

What is a Trademark?

A trademark can be any word, name, symbol, or device, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. Likewise, a service mark can be any word, name, symbol, or device, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services. However, it should be noted that it is not important for a consumer of a product to know the name of the company that manufactured the product, only that the product can be distinguished from the products of other companies.

Choosing a Trademark

A. Avoid Likelihood of Confusion

There are a couple of major issues that should be considered when choosing a trademark. First, it is crucial to determine whether or not another entity is already using a trademark that is the same or similar to your proposed trademark in connection with related products or services. This is commonly referred to as the "likelihood of confusion" issue. Likelihood of confusion is the basic test that is used to determine trademark infringement. Under this test, the question to be answered is whether the average purchaser of a product or service would be confused or deceived as to the source of the product or service. It is important to note that the "likelihood of confusion" issue is evaluated with regards to the specific product or service that the trademark identifies. Thus it is possible to have identical trademarks associated with totally unrelated goods or services, such as "EQUAL" for synthetic sweetener and "EQUAL" for a synthetic resinous material for balancing tires.

B. Make Your Mark Distinctive

A second important issue that should be considered is the distinctiveness of your proposed trademark in relation to the goods or services. Trademarks can generally be classified in four categories: generic, descriptive, suggestive, and arbitrary/fanciful. Typically, the strength of a trademark is related to the category in which it falls. For example, arbitrary or fanciful trademarks are very strong, while a trademark that is generic receives no protection.

As its name suggests, a generic term is the common name associated with a type of product and therefore can never receive trademark protection. The policy behind this is that every competitor should be able to describe his goods as what they actually are. Some examples of terms that were found generic include "SUPER GLUE" for strong-bonding, rapid-setting glue and "SURGICENTER" for surgical centers.

Descriptive marks literally describe the product or service. A test that is often used to determine descriptiveness is whether the mark immediately conveys an idea of the ingredients, qualities or characteristics of the goods. Descriptive marks are generally not registrable with the USPTO unless the applicant can show that consumers have learned to associate the mark with a single source, which is known as "secondary meaning" in legal terms. Examples of marks found to be descriptive are "HONEYBAKED" for hams, "TRIM" for manicuring implements, and "ICE" for beer.

A suggestive mark is similar to a descriptive mark, but does not literally describe the product or service. Suggestive marks require some analysis, imagination, thought and perception to determine the nature of the goods or services. Moreover, suggestive marks do not require a showing of secondary meaning to receive protection. Some examples of suggestive marks are "GREYHOUND" for bus services, "JAGUAR" for automobiles, and "COPPERTONE" for suntan lotions.

Finally, arbitrary and fanciful marks are very strong and typically receive a great deal of protection. Arbitrary marks are common words that are applied in an unfamiliar context, such as "APPLE" for computers, "CAMEL" for cigarettes, and "ORACLE" for software. On the other hand, fanciful marks are coined (made-up) terms that do not have a dictionary meaning, such as "KODAK" for film, "LEXUS" for automobiles, "ROLEX" for watches, and "XEROX" for copiers.

Conclusion

Before expending large amounts of time and money on advertising and marketing for a new product or service, a business should consider the points set out above. As to the likelihood of confusion issue, a comprehensive trademark search should be performed to determine whether another entity is already using a mark similar to the proposed mark in association with similar or related goods. When choosing a trademark, the distinctiveness of the mark should be a major consideration. From a purely legal perspective, it is best to choose a mark that is arbitrary or fanciful. If at all possible, businesses should stay away from trademarks that are descriptive of their goods or services, since descriptive marks are more difficult to register and protect.

DISCLAIMER

We hope you understand that we cannot possibly give accurate legal advice in a brief article. Accordingly, nothing in the above is intended as specific legal advice to any person. Such legal advice can only be given by a qualified practitioner after a careful review of all the individual facts. We urge you to consult us, or another licensed professional, before you proceed.

David Dawsey is an intellectual property attorney with the law firm of Gallagher and Dawsey Co. LPA. David also operates TheTrademarkFirm.com, which is the online portal for trademark searches and applications. Please visit http://www.TheTrademarkFirm.com.

Registering a Trademark? Hire an Experienced Trademark Attorney

The responsibilities of a trademark attorney include advising on the adoption and selection of new trademarks; filing and prosecuting applications to register trademarks; advising on the use and registration of trademarks; handling trademark oppositions, revocations, invalidations and assignments; and advising on trademark infringement matters. Because patents, trademarks and copyrights all fall under the broad area of intellectual property law, if you plan on obtaining a trademark, patent or copyright it is in your best interest to consult with a qualified trademark attorney, patent attorney or copyright lawyer to help you properly file for protection of your intellectual property. If you plan on licensing someone else's copyright, trademark, patent or other form of intellectual property, a trademark attorney can assure that everyone's legal rights are protected under intellectual property law.

Find a trademark attorney that's right for you and your situation. Because registering a trademark requires extensive knowledge of trademark law and procedures it is highly recommended that you use the trademark services of a trademark attorney. A trademark attorney can advise you on many aspects of your trademark filing and on trademark services.

A trademark attorney should be used when choosing a product name trademark or a trademark slogan. Ideally, your trademark attorney would order a trademark search report. Your trademark attorney should then counsel you on the results of the trademark search and whether it is safe to proceed with using the proposed mark. He should also counsel you on any questions you may have, such as how to get a trademark, the cost to register a trademark and how to trademark a logo or trademark slogan. In summary, a trademark attorney will be able to counsel you on all facets of registering a trademark and trademark filing. You may be able to learn about trademark cost, trademark searching, an online trademark search, and the steps to get a trademark by reviewing our trademark articles.

Additionally, a trademark attorney can advise you on how to handle certain situations such as receiving a cease and desist letter. A cease and desist letter is written when a party believes their trademark is being infringed upon. A cease and desist letter must be evaluated by a trademark attorney who will provide you with trademark assistance.

Yet how should you choose a trademark attorney? To begin with, never pick your trademark attorney based solely upon a lawyer referral service or advertising. Lawyer referral services generally do not evaluate the abilities of the attorneys in their listings, but simply accept any attorney willing to pay the membership dues of that referral service. The referral service then refers clients to these "trademark attorneys" on a rotating basis. Usually It is almost always the attorney's own subjective determination that he or she is a "trademark attorney," yet this attorney may have little experience and knowledge of trademark law.

Advertising is also a poor method for finding a trademark lawyer. Many trademark lawyers who extensively advertise run their practices like factories, with impersonal service and an army of paralegals preparing your trademark application. Instead, try to find a trademark attorney who provides individual attention to your trademark matters, including every aspect of trademark searching and trademark filing.

If you like a certain phrase or logo but you aren't ready to use it, you may be able to reserve it for future use, which keeps someone else from taking it. You can acquire rights to the trademark by filing an "intent-to-use" (ITU) trademark registration application with the U.S. Patent and Trademark Office (USPTO) as long as someone else hasn't actually started using the trademark. However, even if you file an intent-to-use trademark application, the mark will not actually be registered until it is used in commerce.

A trademark attorney is often regulated as a profession in which case they must pass a series of examinations, comply with other requirements, and observe professional ethics and standards in order to maintain formal registration as a trademark attorney

Gust A. Lenglet has been an accountant and financial advisor for many years. He is President and CEO of HBS Financial Group, Ltd. and offers online tax filing through his many web sites. He is also an accomplished author in the tax, legal, and education fields.