A trademark typically protects brand names and logos used on goods and to advertize services.
A trademark is generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.
A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than goods.
Selecting a mark is the very first step in building a brand. This must be done with thought and care, because not every mark is registrable with the USPTO. Nor is every mark legally protectable. Some marks may not be capable of serving as the basis for a legal claim by the owner seeking to stop others from using a similar mark on related goods or services. Businesses and individuals new to trademarks and the application/registration process often choose a mark for their product or service that may be difficult or even impossible to register and/or protect for various reasons.
Before filing a trademark/service mark application, you should consider (1) whether the mark you want to register is registrable, and (2) how difficult it will be to protect your mark based on the strength of the mark selected. Note in this regard that the USPTO only registers marks. You, as the mark owner, are solely responsible for enforcement.
Below are some factors to consider when choosing a mark. While the following general guidance is helpful, it will not determine whether your specific mark is registrable.
The USPTO determines that a likelihood of confusion exists when (1) the marks are similar, and (2) the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source.
The strength of a mark, and therefore its federal registrability, can be weighed on a sliding scale. Some marks are weak and cannot receive federal registration.
- Generic words, such as “beer,” are not eligible for protection because they lack a distinctive character.
- Descriptive marks are terms with a dictionary meaning that are used in connection with products or services directly related to that meaning. Descriptive marks must acquire distinctiveness through “secondary meaning” to be protectable. This means consumers have come to recognize the mark as a source indicator of goods or services.
- A suggestive trademark tends to indicate the nature, quality, or a characteristic of the products or services in relation to which it is used, but does not describe this characteristic, and requires imagination on the part of the consumer to identify the characteristic. Suggestive marks invoke the consumer’s perceptive imagination.
- Arbitrary marks are usually a common word which are used in a meaningless context. Such marks consist of words or images that have a dictionary definition before being adopted as trademarks, but which are used in connection with products or services unrelated to that meaning.
- Fanciful marks are inherently distinctive and (usually) registrable. Fanciful marks are a purely invented or “fanciful” word or image.