What is a Trademark?

A trademark is a word, a name, a symbol, or any combination of words, numbers or symbols, used to identify the goods of a company. Merely using a trademark to identify and distinguish a company’s goods (or using a service mark to distinguish services) from other companies’ goods and services, creates trademark rights governed by trademark law.

Trademarks are more commercial-oriented forms of intellectual property, used to distinguish a company’s brand, goods, and services from those of its competitors. Like patents, the PTO prosecutes applications for trademarks, but unlike patents, trademarks do not protect inventions or other tangible assets. Rather, business-related logos, symbols, words, images colors, and sounds are eligible for trademark protection.

Trademarks are critical to protecting a business’s identity, as they distinguish a company’s brand from others in the marketplace. Trademarks protect the goodwill a company has accrued through years of growing its business. A prudent business will seek trademark protection on the words and images associated with its company, such as its name and logo, and any other symbols used to identify its goods and services. With a federally granted trademark, a business can grow its reputation, and as the goodwill grows, so too does the effect of the trademark and the likelihood of successfully defending challenges from rival entities and repelling infringers.

Like patents, a trademark must meet several requirements before the PTO will grant it. Above all else, a trademark needs to be distinct, so that the goods or services the trademark identifies can be distinguished from other similar goods and services. The distinctiveness of a trademark falls into one of five categories: generic (least distinct), descriptive, suggestive, arbitrary, or fanciful (most distinct). The more distinct the mark, the less the likelihood for being confused with other marks, and the greater legal weight it carries when defending against competitors and other unlawful uses. In order to receive protection under federal trademark law (the Lanham Act), you must register your trademark with the United States Patent and Trademark Office. 

A trademark must be distinctly different from the generic name of the product it represents. For example, Kleenex® is a trademark for facial tissue, while White Out® is a trademark for correction fluid. A trademark must not be confused with a trade name. The trade name identifies the company. “The Coca-Cola Company” is a trade name while COKE® is a trademark. 

Trademarks are critical to protecting a business’s identity, as they distinguish a company’s brand from others in the marketplace. Trademarks protect the goodwill a company has accrued through years of growing its business. A prudent business will seek trademark protection on the words and images associated with its company, such as its name and logo, and any other symbols used to identify its goods and services.

With a federally granted trademark, a business can grow its reputation, and as the goodwill grows, so too does the effect of the trademark and the likelihood of successfully defending challenges from rival entities and repelling infringers. Like patents, a trademark must meet several requirements before the PTO will grant it.

Above all else, a trademark needs to be distinct, so that the goods or services the trademark identifies can be distinguished from other similar goods and services. The distinctiveness of a trademark falls into one of five categories: generic (least distinct), descriptive, suggestive, arbitrary, or fanciful (most distinct). The more distinct the mark, the less the likelihood for being confused with other marks, and the greater legal weight it carries when defending against competitors and other unlawful uses.

What can I trademark?

A businesses can apply to trademark many of its fundamental features, such as its name and logo. A prudent business will seek trademark protection on the words and images, such as its name and logo, used to identify its goods and services. When armed with a registered trademark, a business can defend challenges from rival entities and repel infringers.

Federal law, through the Lanham Act (15 U.S.C.S. § 1051 et seq.), has provided benefits to trademark owners for over 70 years. This law created the registries which list the registered trademarks (known as the Principal and Supplemental Registers) and provides trademark owners with the means of defending their marks and obtaining relief from infringers.

How do I trademark something?

To obtain a registered trademark, a business (or individual) must formally apply to the United States Patent and Trademark Office (“USPTO”), the federal entity tasked with prosecuting and registering trademarks as well as maintaining the Principal and Supplemental Registers.

Be “Distinct”

The Lanham Act further sets the conditions for trademark registration. Of all the requirements set forth in the Act, chief among them is that trademark’s need to be distinct, so that the goods or services to which the trademark applies can be distinguished from other similar goods and services.

The distinctiveness of a trademark falls into one of five categories:

  1. generic (least distinct),
  2. descriptive
  3. suggestive
  4. arbitrary
  5. fanciful (most distinct).

The more distinct the mark, the less the likelihood for being confused with other marks, and the greater legal weight it carries when defending against competitors and other unlawful uses. The least distinct marks, however—the generic trademarks—are ineligible for trademark registration. Read here about how a business obtained trademark protection when its own name generically describes its goods or services – booking.com.

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