Trademarking your product names, business name,
logo design, slogans and/or Domain Names is one
of the most important business decisions you will
make. Logo design trademark holders have the ability
to prevent their competitors and other third parties
from using their registered trademark without permission.
A logo design trademark is essential for all companies
that profit from product name or business name recognition.
Companies who fail to register their logo design
trademark, or companies currently conducting business
using an unregistered logo design trademark, run
the risk of losing some or all of their rights to
continue to use their logo design. This normally
occurs when a competitor or unrelated third party
trademarks a mark that is the same or substantially
similar to an existing mark. Few companies have
the financial strength to overcome the full or partial
loss of their right to use their own business name,
product names, logo designs and slogans.
The greatest expense of a trademark is the lack
of it. The federal trademark registration process
is relatively straightforward. A trademark may be
filed at the state, federal or international level.
Trademark filings at the state level generally cost
less than those filed at the federal or international
levels. Thankfully, one does not have to incur the
expense of unusually high hourly attorneys' fees
to simply register a trademark. Once a trademark
search has been performed and you have determined
that your mark is available the next step is to
prepare and file the trademark application. The
filing fee associated with filing a single federal
trademark application is currently $325.00 per class.
The federal trademark application preparation fee
is $250.00 per application.
Overview of Trademarks
The term trademark is frequently used to describe
different types of devices that label, identify
and distinguish products or services in the marketplace.
Consumers often make their purchasing choices on
the basis of recognizable trademarks, such as Coke,
McDonald's or Nike. The main thrust of trademark
law is to make sure that trademarks don't overlap
in a way that causes customers to become confused
about the source of a product.
Trademark Categories & Criteria
In order to serve as a trademark, a mark must be
distinctive - that is, it must be capable of identifying
the source of a particular good. In determining
whether a mark is distinctive, the courts group
marks into four categories based on the relationship
between the mark and the underlying product: (1)
arbitrary or fanciful, (2) suggestive, (3) descriptive,
or (4) generic.
* Arbitrary.An arbitrary or fanciful mark is one
that bears no logical relationship to the underlying
product. For example, the words "Exxon"
and "Kodak" bear no inherent connection
to their underlying products (respectively, gasoline
and cameras/computers).
* Suggestive.This is a mark that evokes or suggests
a characteristic of the underlying good. For example,
the word "Coppertone" suggests the color
of a deep sun tan, but does not specifically describe
the actual product. Some exercise of imagination
is needed to associate the word with the product.
* Descriptive.A descriptive mark directly describes,
rather than suggests, a characteristic or quality
of the underlying product (e.g. its color, odor,
function, dimensions or ingredients). For example,
"Holiday Inn" and "All Bran"
both describe some aspect of their underlying product
or service (respectively, hotel rooms and breakfast
cereal). Unlike arbitrary or suggestive marks, descriptive
marks are not inherently distinctive and are protected
only if they have acquired "secondary meaning."
This occurs when the consuming public primarily
associates that mark with a particular producer.
* Generic.A generic mark is a mark that describes
the general category to which the underlying product
belongs. For example, the term "Computer"
is a generic term for computer equipment. Generic
marks are entitled to no protection under trademark
law. Thus, a manufacturer selling "Computer"
brand computers (or "Apple" brand apples,
etc.) would have no exclusive right to use that
term with respect to that product.
Service Marks
While trademarks promote products, service marks
promote services and events. Generally, when a business
uses its name to market its goods or services in
the yellow pages, on signs or in advertising copy,
the name qualifies as a service mark. Some familiar
service marks include Jack in the Box (fast food
service), Blockbuster (video rental service), and
the Olympic Games' multi-colored interlocking circles
(international sporting event).
Certification Marks
These are symbols, names or devices used by an organization
to vouch for products and/or services provided by
others, like the Good Housekeeping Seal of Approval.
This type of mark may cover characteristics such
as regional origin, method of manufacturing, product
quality and service accuracy. Some examples of certification
marks include: Stilton cheese (a product from the
Stilton locale in England) and Carneros wines (from
grapes grown in the Carneros region of Sonoma/Napa
counties).
Collective Marks
These are symbols, labels, words, phrases or other
marks used by members of a group or organization
to identify goods, members, products or services
they render. Collective marks are often used to
show membership in a union, association or other
organization. For example, the letters "ILGWU"
on a shirt label is the collective mark that identifies
the shirt as a product of a member of the International
Ladies Garment Workers Union. The use of a collective
mark is restricted to members of the group or organization
that owns the mark. If the group wants to identify
its product or service, it must use its own trademark
or service mark.
Trade Dress
A product may also come to be known by its distinctive
packaging - Kodak film or the Galliano liquor bottle,
for example - and a service by its distinctive decor
or shape, such as the decor of Banana Republic clothing
stores. Collectively, these types of identifying
features are termed "trade dress." Because
trade dress often serves the same function as a
trademark or service mark (the identification of
goods and services in the marketplace), trade dress
can be protected under the federal trademark laws
and in some cases registered as a trademark or service
mark with the Patent and Trademark Office.
Differences Between Trade Names and Trademarks
The name that a business uses to identify itself
is called a "trade name." This is the
name the business uses on its stock certificates,
bank accounts, invoices and letterhead. When used
to identify a business as an entity for non-marketing
purposes, the trade name is given some protection
under state and local corporate and fictitious business
name registration laws, but it is not considered
a trademark or entitled to protection under trademark
laws. If, however, a business uses its name to identify
a product or service produced by the business, the
name will then be considered a trademark or service
mark and be entitled to protection if it is distinctive
enough.For instance, Apple Computer Corporation
uses the trade name Apple as a trademark on its
line of computer products.In much the same manner,
a domain name used to identify an Internet-based
business qualifies as a mark when it is used in
connection with a website that offers e-commerce
and/or services to the public.