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Trademarks

  • A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods and/or services of one business from those of others. Trademarks typically take the form of words, phrases or graphic logos (which may include words or phrases), although trademarks can include other forms, such as:
  • Sound
  • Scent
  • Texture
  • Color
  • Domain names

A business acquires trademark rights simply by using the trademark. Trademarks can often be registered at a state level (e.g. Florida) and/or at a federal level (nationwide via the USPTO).

Registration is not required to use a trademark, and an unregistered trademark can still be defended in court, however, registration is relatively inexpensive and carries certain advantages, for example a federal registration provides:

  • Notice to the public of the registrant's claim of ownership of the mark
  • Legal presumption of ownership nationwide
  • The exclusive right to use the mark on or in connection with the goods or services set forth in the registration nationwide

A strong trademark is memorable, unique and inventive. Trademarks can be generally categorized as:

  • Fanciful marks – made up words not found in any dictionary. Examples are Kodak and Xerox.
  • Arbitrary marks – common words used in connection with products or services unrelated to dictionary meaning of the word. One example is “Apple” for computers.
  • Suggestive trademarks – words that suggest the nature, quality, or a characteristic of products or services, but do not explicitly describe such products or services. Examples are “Green Giant” frozen vegetables and “Chicken of the Sea” for tuna.
  • Descriptive marks – words that describe the nature, quality, or a characteristic of the products or services in relation to which it is used. Examples are “Tasty” for bread, “Trim” for nail clippers; and “Car Freshener” for deodorizer.
  • Generic marks – generic terms are terms that are typically used to describe products or services. For example, the mark “Pet Store” would be generic for a retail business selling pets.

If a business is selecting a new trademark, fanciful and arbitrary marks are, by far, the safest and surest choices. So long as no competing business is using the same or similar mark, successful registration of the mark is very likely at state and federal levels.
Suggestive marks can be strong as well, but the mark holder should take care that the mark truly suggests a characteristic of a product, and does not describe the characteristic.
Descriptive marks are typically difficult to register and defend (unless it can be shown that long time use has made the mark familiar to consumers), and should be avoided. Generic marks are generally not protectable, and should be avoided.
It should be noted that a misspelling of a descriptive or generic term, no matter how clever, does not make term any less descriptive or generic. Thus “Pet Store” and “Peght Storr” are both generic for a retail business selling pets.
If you are contemplating adopting a new trademark, you are best advised to consult a qualified attorney. Before consulting an attorney, however, you may wish to search the USPTO trademark database using the TESS search facility for uses of your mark. Google and Bing are good resources as well.
One other matter deserves mention. If you manufacture or sell a product in foreign countries, you may wish to register your mark in such countries as well. For example, if your goods are manufactured in China, if another entity has a registration for the mark in China, they could block the shipment of your goods to the U.S.

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