What can be trademarked?

Anything can serve as a trademark that indicates the source of goods or services: words, slogans, colors, smells, jingles, songs, shapes, and trade dress, for example.

You need to separately protect each element (e.g., the look of a logo, the words(s) included in a logo, and the words of a wordmark or slogan), because each is separately “stealable”, and so each must be separately protected. Each trademark application will be separately examined. Further, trademark protection is broader if each element of the commercial impression is separately assertable.

Different companies can use the same trademark for different classes of goods or services. That’s why each trademark gets examined in the context of the class of goods or services for which the trademark will be used.

Strength of Trademarks:

Different type of trademarks have different strengths when asserted. From strongest to weakest:

Fanciful Trademarks

When a trademark has been created for the sole purpose of functioning as a trademark, and has no other meaning than acting as a trademark, the trademark is considered to be “fanciful”. The company must build a “brand” around the trademark, because the trademark has no meaning in the minds of consumers when first introduced. This is the strongest type of trademark, meaning that the courts give it the most rights against others. However, it is also among the most expensive to build a brand around, because it will take time, advertising, and public relations efforts to educate the consumers as to the meaning of the trademark. That is why only large companies typically choose fanciful marks. Classic examples of fanciful trademarks include:  Xerox®, Exxon®, Kodak®.

Arbitrary Trademarks

Arbitrary trademarks include words that have a pre-existing meaning, but are applied to a product or service that is unrelated to that meaning. Well-known examples of arbitrary marks are: Apple® computers, Shell® gasoline, and Blackberry® cell phones. Like fanciful trademarks, commercially established arbitrary marks are given broad protection against third-party use of the trademark.

Suggestive Trademarks

A suggestive trademark suggests a quality, characteristic, or aspect of a product or service, but does not describe it exactly. Some imagination is required to mentally associate the trademark with the product or service. For example, by naming a car after a fast, sleek animal, such as a jaguar, the company is suggesting that its Jaguar® car resembles the appealing qualities of a jaguar. For stop and go traffic, the trademark Rabbit® for a small urban vehicle suggests rapid starts and stops. As such, the consumer forms an image in their mind that helps them to understand the benefits of the car, just by reading the name.

Descriptive Trademarks

Descriptive Trademarks provide the weakest trademark protection, because although the trademark is associated by some consumers with the business that owns the trademark, the trademark only describes the goods and services sold by the trademark owner. An example of a descriptive trademark is Steak ‘N Shake®. Some descriptive trademarks will be initially rejected for inclusion on the Principal Register, but can be placed on the Supplemental Register. After 5 or more years of consecutive trademark use, and being on the Supplemental Register for five or more years, one can then re-apply for inclusion on the Principal Register.

What you can’t trademark:

Generic Trademarks are never protectable because they only identify a category of goods or services. Also, one cannot take words out of the English language that need to be used to describe goods and services. Examples of generic marks include: Car Wash for car wash services, or Mexican Restaurant for a restaurant.

Why you need trademark protection:

You don’t want confusion in the marketplace among consumers, because you could lose business, goodwill, and reputation. Trademarks indicate the source of goods or services in commerce to prevent such confusion.

You can assert your trademark to stop someone in the market from creating confusion about the origins of your goods/services.

  1. You don’t want a company that is erroneously thought to be your company, selling or doing things that are bad. Because then their actions taint the reputation of your company, or your company’s products or services. You don’t want to lose your company’s good reputation because of another company’s bad business practices.
  2. If your company or product or service has a great reputation, you will attract imitators. Your name, image, or other aspect of your commercial impression could possibly be imitated or copied to the extent as to steal your customers. You’ve become so successful, another company puts your name and/or logo on the goods that they sell, thereby riding your coattails. You don’t want to lose business because of another company selling goods that appear to be from your company.

By registering your trademark, you get the right to assert your trademarks in court. Without registration, others can start using it and possibly get stronger rights than you.

What will NOT protect your trademark:

  • Forming a Corporation or LLC having the name
  • Filing a DBA (Doing Business As)
  • Buying a Domain Name
  • Poor Man’s Trademark (writing it down and mailing it to yourself to prove that you thought of it first)
  • Copyright Registration

Proper Use of Your Trademark

Combine your trademark with a generic description of the goods or services. Examples include:  Apple® Computer, Kleenex® Tissues. If your trademark becomes part of the language, you can lose your trademark rights.

You need to assert your mark whenever you find others violating your trademark rights. You must defend your trademark, or you could lose it.

When to use TM:
Indicates to the public that the mark you are using with your goods or services is your trademark. You can use the little TM before applying for trademark protection. The sooner you start using a trademark to help sell your goods or services, the stronger your rights in the mark will be.

When to use ®:
You can use the little R in the circle only after your trademark application has been allowed and your mark has been included on the Principal Register OR on the Supplemental Register.

Process of Applying for Trademark Protection

The Trademark Attorney must be provided with the name, slogan, and/or logo that you’d like to protect.

Then, you must provide a list of the goods or services that you’d like to sell or offer to the public that will be represented by the trademark. If you have already started selling using the mark, you must provide a “specimen of use.”

If you have not started using the mark, then an “Intent to Use” application will be filed. The trademark applicant has six months from allowance to use the trademark and submit a statement of use, or request an extension.

The Trademark Lawyer or Paralegal will determine how many classes are required to cover those goods or services. The number of classes needed will determine the fees.

When the Trademark Application is examined, the Trademark Examiner does a search to see if anyone else is using your mark in your class(es) of goods/services, looking for exact matches, and for confusingly similar marks.

The trademark will be published for opposition, which means that that a third party could object to your trademark application. Any third party has thirty days from the date of publication to object.  If there are no objections, a registration certificate issues (about twelve weeks after the date published for opposition).

Professional Help Registering Your Trademark

Call for your Free Phone Consultation with Patent Attorney Russ Weinzimmer: (800) 621-3654.


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RUSS WEINZIMMER & ASSOCIATES, PC

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