What is a TRADEMARK?

A trademark is composed of a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of competitors. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service. The term “trademark” is often used to refer indistinctively to both trademarks and service marks. Under international treaties, goods and services are classified in “classes,” which allows an applicant to register a trademark and limit the scope of protection. Famous marks and well-known marks, instead, have differential treatment pursuant to treaties. Each country has implemented individual rules and criteria for these marks.

 

The United States and a few other countries are common law jurisdictions, meaning that rights are acquired upon use, not upon filing an application as in the vast majority of countries where marks can be registered without being used.  A federal registration, however, will grant broader protection to a mark owner who eventually will be able to seek more money damages and remedies as opposed to a mark owner without federal registration.  Once a US mark registers in the United States for 10 years, it requires maintenance between the 5th. and 6th. years after registered, and then every 10 years after the first renewal.

 

Types of Trademarks

There are five generally recognized types of trademarks: generic, descriptive, suggestive, arbitrary and fanciful.

 

  • Generic: This mark is usually a common description of the goods that the mark identifies or a mark that refers to, or is understood to be referring to, the genus of which the particular product is a species. Simply put, these marks are not protectable. 

  • Descriptive: This mark describes the qualities or features with which a product is used. These are weak marks and are hard to enforce. In some cases, they might be protected if they acquire secondary meaning through use for a period of years.

  • Descriptive: This mark describes the qualities or features with which a product is used. These are weak marks and are hard.

  • Suggestive: This mark evokes, infers, implies, or suggests features or characteristics of a product or service, requiring the target audience to use intuition, imagination, and perception to understand the nature, characteristics, and features of those goods or services without directly describing them.

  • Arbitrary: This type of mark is composed of existing words that are used to identify goods or services that have no relationship with the term used in connection with them.

  • Fanciful: This mark involves made-up words that do not have any meaning in any language. Their only purpose is functioning as a mark.

 

Marks that are arbitrary, fanciful, or suggestive are inherently distinctive and usually are granted registration without major issues.  By contrast, descriptive marks can be registered and protected if they have acquired distinctiveness (or secondary meaning) through use over a period of years.  Generic marks, instead, are never entitled to trademark registration or protection.  A trademark’s strength is rooted on its level of distinctiveness and its capacity to indicate its source of origin.

 

Once a trademark application is filed, it is assigned to an examining attorney to conduct a ‘registrability’ test. For example, marks that are scandalous, derogatory, immoral, etc., are not registrable as a matter of public policy. Marks that create likelihood of confusion with other pre-existing trademark owners' marks are not registrable as a way to protect not only those mark owners, but also the public.

 

At Brandia, we help individuals, start-ups and established businesses search, clear, select, register and protect their brands and trademarks in the United States and internationally with the support of a network of IP experts. A US licensed Attorney will work with you to prepare and file your trademark application until completion and to implement strategies that reflect your business' presence, goals and expansion plans.

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