MyTrademarkEd - Protect Your Business: Educate Yourself on Trademark, Patent, and Copyright Law

There are 5 types of trademarks.

Trademarks fall into one of five categories: Generic, Descriptive, Suggestive, Fanciful, and Arbitrary.

The first category to consider is generic trademarks. Suppose a consumer is selling candy bars, and wants his trademark to be CANDY BARS. This won’t be acceptable as a trademark because CANDY BARS is just the commonly understood name of what the consumer is selling.

The reason generic trademarks can never be registered has to do with the purpose of trademarks. We register trademarks to prevent other companies from profiting off of your hard-earned brand. It wouldn’t make sense to allow people to register for generic trademarks because everyone in the candy bar industry needs to be able to use words, like candy bars, in advertising materials.

The second category is descriptive trademarks. Descriptive trademarks describe an ingredient, quality, characteristic, function, feature, purpose, or use of what a consumer is selling. Suppose a consumer is selling candy bars, and wants her trademark to be SUGAR. This would be a descriptive mark, because sugar is an ingredient in candy bars. These are unlikely to get registered on the Principal Register because they merely describe what that consumer is selling.

The third category is suggestive trademarks. Suggestive marks hint at what you’re selling, but don’t actually describe what you’re selling.

Another way to think of this is the trademark takes some imagination for consumers to understand what you’re selling. An example of a suggestive trademark for candy is ALMONDJOY. These words hint at what you might be selling, like candy bars, but it takes some imagination to get there.

The fourth category is arbitrary trademarks. This is a trademark that may have a common understanding for another product or service, but doesn’t relate to what you’re selling. An example of an arbitrary mark is BOAT for selling candy bars. BOAT would be generic if you’re selling boats, but has no meaning in relation to candy bars.

Finally, the fifth category is fanciful trademarks. The best way to think about these trademarks is that they have no meaning. An example of this would be KAMAKI for chocolate bars. Since KAMAKI is a made-up word and has no meaning in any language, it is considered fanciful. And, because fanciful trademarks are so unique, they are entitled to the strongest level of protection against possible infringers.

There are many benefits for companies and entrepreneurs to federally registering a trademark.

First, trademarks add incredible brand value to companies.

Forbes recently valued the Apple brand at $205.5 billion dollars. The estimated brand value of McDonald’s is $130 billion dollars.

Trademarks are intangible Intellectual Property assets that give some companies billions of dollars of brand value. And they represent the bulk of a small company’s brand value as well.

When entrepreneurs and small business owners are ready to make this next step in securing federal trademarks, it is important for them to protect their brand value through federal trademark registration.

Second, a federally registered trademark allows broad national protection across all 50 states.

Third, a federally registered trademark allows trademark owners to sue in federal court if they believe that their trademarks are being infringed upon by a competitor.

It also lets entrepreneurs send a cease and desist letter to potential trademark infringers. This cease and desist letter would specify that the trademark owner has the federal rights to the trademark.

Fourth, registering for a federal trademark prevents the headache of potentially having to rebrand a company.

The last thing a company or entrepreneur wants is to spend a lot of money building a brand, only to find out another company already has a very similar registered federal trademark. Entrepreneurs certainly do not want to be on the receiving end of a cease and desist letter - or worse, a lawsuit - from a competitor.

Fifth, a federally registered trademark simply gives peace of mind. It signals to others that entrepreneurs are serious about their businesses, and shows that they are ready for the next step in their professional success.

After successfully registering for a federal trademark, the United States Patent and Trademark Office will even send an official federal trademark registration certificate.

Sixth, by receiving a federal trademark registration, entrepreneurs can use the restricted symbol with their trademarks. This makes it clear to everyone that the entrepreneur has a federally registered trademark.

Registering for a federal trademark adds a lot of credibility and legitimacy to brands.

Trademarks are a necessary step for entrepreneurs and businesses that are serious about taking their businesses to the next level. It is an important business, personal, and legal decision that provides many benefits for companies.

There are 5 considerations every business owner should consider when making the decision to register a trademark.

• First, you should register for a federal trademark when you want to protect the good will of your brand.

Small business owners spend hard-earned money building a brand.

By registering your trademark with the United States Patent and Trademark Office, you can protect your company’s good will from potential infringers. Specifically, you can bring a lawsuit for trademark infringement in federal court. Or, you can send a cease and desist letter, indicating that you have the federal rights to your trademark.

By not protecting themselves with a federal trademark, you risk other companies using a trademark that is identical or highly similar to yours. In certain instances, other companies may argue that you are infringing on their trademark rights, especially if they file for a federal trademark before you do.

To avoid this scenario, federal trademark registration fortunately allows broad protection for your trademark across the entire United States.

Business owners and entrepreneurs should first consider whether there is a trademark – whether it be a company’s name, an expression, or even a logo – that they believe promotes(or will one day establish) brand value.

If you believe that a word or a logo does or will be important for brand value, you should strongly consider federal trademark protection.

• Second, once you decide that you want a trademark, there are two specific ways to register your trademark:

(1) When you already are selling products or providing services with the trademark or

(2) When you intend to sell products or provide services with the trademark.

The first option means you’ve already begun using the trademark with your products or services. For instance, you may have already sold t-shirts or provided bakery services with that trademark.

The second option means you have a bona fide intent to sell a product or provide services with a trademark. This means you are making a sworn statement that you have a true intent to use this trademark to sell products or provide services with a trademark.

• The third consideration is to file as soon as possible.

If you are already using your trademark or have a true intent to use that trademark, it is advisable to file as soon as possible. By waiting, you could potentially risk others scooping up that federal trademark registration from you in certain situations.

• The fourth consideration is that you should file for trademark protection after conducting your due diligence.

You want to conduct due diligence before spending money on a federal registration. For instance, the USPTO has a database that lets you search for similar pending or registered trademarks.

By conducting due diligence, you will develop a better understanding of whether your mark will be published by the USPTO.

• The fifth consideration is that you should file after making a business (and personal) decision.

Filing for a trademark is a business, legal, and personal decision. It involves weighing the potential legal and business risks of not filing for a trademark, and the impact of not doing so on your brand value.

Ultimately, you want to think a great deal about the brand of your business, and spend considerable thought on what names or logos you want associated with that brand.

Maybe you hire an artist to help you with a certain logo, or workshop names for a company with friends, family, and even focus groups.

Remember that this trademark is a long-term decision. You want to make sure you love this name or logo!

Many small business owners ask, Should I trademark my business name or logo first?

As a reminder, trademarks act as a source indicator of goods and services. Trademarks could be a business name, a design element, a logo, or, in some cases, even the shape of a bottle!

Let’s take Starbucks as an example.

STARBUCKS is the name of the business, and an important trademark for this billion-dollar company. But that’s not their only trademark. The green mermaid logo is also an incredibly strong source indicator of the Starbucks brand. When customers see the green mermaid logo, they immediately think of Starbucks.

A billion-dollar corporation like Starbucks, of course, has the resources to file for many trademarks. But that’s not the reality for most small business owners and entrepreneurs.

Deciding whether to trademark a business name or a logo first is an important business, legal, and strategic decision. One important question to ask is: If I only have the resources to file for one trademark, would the business name or logo be the better source indicator of my goods and services?

For many businesses, the business name is the stronger source indicator. Most small business owners want their business name to be strongly associated with their brand, and investing in a trademark for their business name is a smart decision. Then, when the company has additional resources, they will often file for additional trademarks, including logos.

For instance, let’s consider a small clothing company named XENLIN. The clothing company opens a small store, and puts XENLIN prominently on their storefront. The clothing company also sells shirts with a colorful flower logo. Ideally, the company would want to file for both trademarks: the business name and the logo. If that store owner only has the resources to file for one trademark, however, she should ask: Would the business name of XENLIN or the logo of the flower act as a stronger source indicator of the clothes?

In this case, the store owner might decide that she wants to first invest in the trademark for the business name XENLIN. At this point, the store owner decided that her primary goal is for customers to know the company’s name of XENLIN and tell other potential customers about the location of the store. Then, when the company has additional resources, the store owner can apply for the flower logo.

Applying for trademarks is an individual decision. Some companies may decide that the business name is more important to them than a logo, while others may decide the opposite. This decision is up to the business owner, and is based on a variety of business and strategy goals. One important question business owners should consider in this determination is whether the business name or the logo acts as a stronger source indicator of their goods and services.

Trademarks 103-01: How to use the Trademarks 103 Database

Trademarks 103-02: How to Read an Office Action

Trademarks 103-03: How to Contact the Attorney Reviewing your Application

Trademarks 103-04: How to Electronically Respond to an Office Action

Trademarks 103-05: I received a Non-Final Office Action

Trademarks 103-06: I received a Final Office Action

Trademarks 103-07: How to Respond to an Examiner’s Amendment

Trademarks 103-08: I received a Priority Action or a Examiner’s Amendment/Priority Action

Trademarks 103-09: Need help navigating the USPTO electronic system?

Trademarks 103-10: Disclaimer Requirement

Trademarks 103-11: Entity Clarification Requirement

Trademarks 103-12: Amended Mark Description and/or Color Claim

Trademarks 103-13: Amended Identification of Goods and/or Services Requirement

Trademarks 103-14: Amended Classification and Identification of Goods and Services Requirement

Trademarks 103-15: Multi-Class Application Requirements

Trademarks 103-16: Translation Statement Requirement

Trademarks 103-17: Name Inquiry

Trademarks 103-18: Request for Information

Trademarks 103-19: I received a “Notice of Allowance” from USPTO, but now I need a Statement of Use?

Trademarks 103-20: Can I get an extension to file a Statement of Use?

Trademarks 103-21: Submitting a Statement of Use

Trademarks 103-22: Unacceptable Specimen or Statement of Use

Trademarks 103-23: Mark on Specimen and Drawing Do not Match

Trademarks 103-24: Sections 1, 2, and 5 Refusal - Mark is Ornamental

Trademarks 103-25: Section 2(d) Refusal - Likelihood of Confusion

Trademarks 103-26: Advisory: Prior Pending Application(s) Filed

Trademarks 103-27: I received a Suspension Notice about a Prior Pending Application(s)

Trademarks 103-28: Section 2(e)(1) Refusal – Mark is Merely Descriptive

Trademarks 103-29: Section 2(e)(2) Refusal – Mark is Primarily Geographically Descriptive

Trademarks 103-30: Section 2(e)(4) Refusal – Primarily Merely a Surname Refusal

Trademarks 103-31: Advisory: Supplemental Register

Trademarks 103-32: Advisory: Section 2(f) Acquired Distinctiveness

Trademarks 103-33: Failure to Function Refusal: Merely Informational or Commonplace Messages

Trademarks 103-34: Title of a Single Work Refusal

Trademarks 103-35: My Application Abandoned

Does Federal Trademark Registration In The United States Provide Protection In Other Countries?

What is a standard character trademark?

What are the different types of trademarks?

What is a service mark?

What is a trademark?

How do I protect my brand and trademark from trademark infringement?

What are the benefits of registering for a federal trademark?

When should I register for a federal trademark?

What is the difference between a trademark, a copyright, and a patent?

What is the difference between a trademark and a service mark?

What is the difference between the TM, SM, or ® symbol?

When can I use the TM symbol with my trademark?

Can I use the TM symbol if my trademark is not registered?

Can I use the ® symbol if my trademark is not registered?

Should I register my business name or logo first?

What is a disclaimer?

What is a specimen?

What is the Supplemental Register?

Can a federally registered trademark help me get the Twitter handle for the trademark?

What is a Section 2(d) Refusal – Likelihood of Confusion?

What is an Examiner’s Amendment?