The Different Types of Trademarks & What You Should Know
Companies and businesses are constantly racing to grab their desired trademarks before their competitors. This is for good reason — by filing and obtaining the right to use a trademark, businesses can gain the legal presumption that they own a trademark and maintain the sole right to use it. To illustrate its value, think about any famous brands you know. When you do, chances are you’ll envision a logo, slogan, or idea. This type of recognition provides any company with high value and can be used strategically in its marketing and sales processes.
As a trademark owner, there are numerous ways you can use trademarks to gain a competitive advantage. However, the filing process can be stressful, especially as you’re diligently trying to protect your brand as you go through this complex process.
Before filing your registration with the United States Patent and Trademark Office (USPTO), knowing what type of trademark you want is important. The experienced California trademark prosecution attorneys at Trestle Law are fully equipped to help you develop, register, and protect your mark. Call our San Diego-based law firm today at 619-343-3655 to schedule a complimentary consultation.
What is a Trademark?
A trademark identifies the source of your goods and/or services to consumers. Your trademark can be a word, phrase, symbol, design, or any combination of these elements. When your customers or clients see your mark, its distinctiveness will trigger them to immediately visualize your brand. The key to a successful trademark (or service mark if you offer services) is to make it distinguishable and easily recognizable in the consumer market.
Registered trademarks are a smart business strategy because not only will they give you a competitive advantage in your market, they’ll provide legal protection for your brand and help guard your organization against counterfeiting and fraud.
What is the Lanham Act?
The Lanham Act was passed in 1946, and it federally protects trademarks by paving the way for a national system for entities to file a trademark application with the U.S. Patent and Trademark Office. This office empowers brands to register their marks, protect their owners against unlawful use by other entities, avoid confusing consumers, or prevent the dilution of any famous marks.
In a nutshell, The Lanham Act’s creators designed it with the intent of protecting intellectual property from trademark infringement, trademark dilution, false advertising, and unfair competition. The result is providing all trademark holders with a level of protection when it comes to their trade name, logos, and other trademark assets.
Different Ways to File a Trademark
There are two ways to file a trademark 1(a) and 1(b).You have to choose which type of filing you’re submitting at the time you put your application together. 1(a) means that your mark is already being used in commerce. You’ll need to submit proof of that use. Filing a 1(b) is essentially you “calling dibs” on the mark, but aren’t using it yet. It demonstrates your intent to use.
It’s important to keep priority dates in mind since these establish who has the right to the trademark. When you first begin using the mark in commerce, that’s the priority date. With a 1(b) application, your priority date becomes the date you first submitted the application, so long as registration actually issues. Meaning, you do have to eventually prove use in commerce in order for the mark to register.
Is there a Difference Between a Trademark and a Service Mark?
A service mark and a trademark are treated the same. The only difference is service marks are for marks that offer services and trademarks are for marks that offer goods. Hotels (Hilton, Marriott, IHG, etc.), airlines (United, American Airlines, JetBlue, et al), and fast-food chains (e.g., McDonald’s, Wendy’s, etc.) are perfect examples of companies that hold service marks. You are not limited. Companies can have both service marks and trademarks depending on what goods/services they’re offering.
For example, McDonald’s may hold a service mark for “McDonald’s” covering their food services, but they might also hold a trademark for “McDonald’s” covering their happy meal toys. A product that designates a ® means the trademark or service mark is registered with the USPTO, whereas a ™ designation simply means you are claiming rights to the mark, but perhaps your mark has not yet been registered.
Analyzing the Strength of Your Trademark
In determining whether a trademark is worthy of protection with the USPTO, it’s important to evaluate whether the mark is strong enough to achieve registration. Strength is evaluated on a scale. The scale goes from weakest to strongest – Generic, Descriptive, Suggestive, Arbitrary, and Fanciful. Marks that are considered weak are ineligible for registration since they are generic. They’re never registrable. It is important to have a strong trademark.
Generic
Generic marks are ones representing common everyday words such as “food,” “cars,” or other products being sold. Generic terms do not receive trademark protection since they would give permission for a party to monopolize words used in everyday language. To qualify for a generic trademark, if the mark includes generic attributes, the party must include additional modifiers that are directly linked to a particular good or collection of products to make it unique. However, the parts of the mark that are generic are required to be disclaimed.
Descriptive
This type of mark describes an ingredient, quality, or characteristic of the goods and/or services being offered under the mark. A descriptive mark will only be offered trademark protection if its owner proves secondary meaning. Secondary meaning or acquired distinctiveness can occur in two ways; the connection it makes with the public or the length of time the mark has been in use. The more descriptive the mark is the more you will need both. In other words, according to the USPTO, you can only register these under specific circumstances, such as long-term use where the consumer immediately connects the mark to the brand. An example of these types of marks is American Airlines. It has been used for so long and has become so well-known that now it has a secondary meaning.
Suggestive
Suggestive trademarks suggest what the product or service is or does, but are not explicit. Suggestive marks are inherently distinctive because they require an “extra leap” in the minds of the consumer to tie the product and/or service to the mark. For example, Netflix began as an alternative to Blockbuster and was suggestive of movies being delivered over the internet.
Even if you aren’t intimately familiar with what the trademark holder specifically offers to consumers, chances are you know what the companies holding suggestive marks are selling. Good examples of suggestive trademarks include Coppertone (suntan oil/lotion), Greyhound (buses), Netflix (TV streaming), Microsoft (software and other tech products), and Nike (athletic apparel).
Suggestive marks are the most challenging because they are sometimes seen as descriptive. Since generic and descriptive marks are not entitled to registration, it’s important to make the distinction. Beyond generic and descriptive marks, no secondary meaning is required.
Arbitrary
Arbitrary trademarks are unique in the fact that they may include a word or phrase with a well-known meaning, but the mark represents something else entirely where the public is concerned. Apple is one of the most famous types of arbitrary marks. Everyone knows an apple is a fruit, but when referring to luxury technology products, the public immediately associates it with Apple, the tech giant.
Fanciful
As the easiest trademark to register, applicants can develop a term, name, or logo that is different from any other in existence and create fanciful trademarks. Since fanciful trademarks do not compete with other words, images, or other items, owners can feel confident they can use them and subsequently protect them to identify with their brand perpetuity when they are consistently maintained. Great examples of fanciful marks include Xerox, Kodak, and Yahoo.
Why Do the Different Types of Trademarks Matter?
The different types of marks matter because if the term, phrase, symbol, or logo you’re trying to register is too generic, you’ll most likely run into issues during the trademark registration process. This is because your mark is likely to be too similar to another existing trademark, and the USPTO will not approve a registration if a party is trying to register similar marks that have already been approved for use by someone else.
In a nutshell, you’ll need to know about the registerability of your mark and if qualifies. The reason is that if two or more marks are too much alike, it’s going to create a likelihood of confusion for consumers or the general public, and your mark will be denied. Choosing the right type of trademark can alleviate many issues while still providing value to your brand. Make sure you thoroughly evaluate your mark before submitting it. An experienced trademark attorney can really help businesses complete this step.
Is There a Deadline to File a Trademark?
No, you do not have any specific or hard deadlines to register your trademark. With that being said, it is important to act quickly before someone else beats you to the proverbial punch. To better protect yourself, it makes sense to file for any trademark you develop to represent your brand so you can hold the rights to them.
Trademark rights are not based on registration in the US. They are based on use and commerce; however, registration is afforded on a first come and first serve basis.
This means, you don’t need to be approved to use your mark, but you do put yourself at significant risk if you don’t register it. This is true even if you aren’t open for business or otherwise not using your mark yet — you can still apply and file for your mark on an “intent-to-use” basis. Even if your trademark is pending, as long as it was submitted before another party trying to use the same or similar mark and meets the criteria of distinguishing itself from other existing trademarks, you should be in good shape.
At Trestle Law, we strongly recommend that you do not delay in filing your trademark so you can protect yourself from a competitor filing first. Urgency prevents them from essentially taking your marks from you.
What is the Difference Between a Trademark and a Patent?
While trademarks and patents are both types of intellectual property, the two have distinct differences. Trademarks are source identifiers, while patents are useful inventions.
Attributes of Trademarks
Trademarks identify where things come from and are not functional (useful). Trademarks protect a name, slogan, or symbol — essentially distinguishing and serving as a source identifier for a company. While it’s worthwhile to register them to gain a competitive advantage and have the rights to valuable intellectual property assets, it is not a requirement. Trademarks also have no expiration date, and holders can use them forever as long as they maintain them.
Attributes of Patents
Patents have a requirement of usefulness in order to achieve registration. A patent protects the right to sell, make, and use an invention. Usefulness is the key factor here because while trademarks identify where things come from, unlike patents, they are not functional. Patents have a requirement of usefulness and are commonly filed for machinery, medications, technology, and essentially any type of product developed that will be used in society. Important to understand, you cannot patent your idea. You must present it in the form of a process, machine, or object you plan to develop and put on the market.
Entities or individuals applying for patents can choose from two types of applications: utility or design. The method by which you file a patent is through either a provisional or nonprovisional basis. A provisional filing basis occurs when the entity or individual is not ready to protect the full patent yet. A nonprovisional filing basis is the full utility or design. Each patent type has different lengths of time and rules associated with them. Unlike trademarks, patents do have expiration dates.
Do You Need Trademark Help for Your California Business?
Trademarks are valuable intangible business assets that companies can use on the web, social media, or other marketing channels. When entering the trademark registration process, speaking to a knowledgeable intellectual property attorney is a good idea. Strong trademarks can set your brand apart from competitors, and by registering them, you can legally maintain an exclusive right to any marks approved by the USPTO. You can gain several benefits by working with our San Diego-based trademark attorneys.
Our lawyers are passionate about everything trademark law and will help you file the correct paperwork, do trademark searches, and protect you from trademark infringement. At Trestle Law, we pride ourselves on providing our clients with sound legal advice during the application process and beyond.
Obtaining trademark rights can be a complex process, but it is definitely a worthwhile endeavor. Trestle Law offers an array of services relating to intellectual property, and we are happy to speak with you to help you to determine your needs. We invite you to give us a call at 619-343-3655 to learn more about the services we can provide to your company.
Keep Your Brand Protected
Ready to establish your trademark rights? Trestle Law services businesses in San Diego County, throughout the state of California, nationwide, and globally. Contact the attorneys at Trestle Law today to receive a complimentary, no-strings-attached consultation. Trestle Law is always happy to answer any questions and will provide additional information to help you protect your intellectual property. Before your session, we’ll send you PDFs, videos, and blog entries to give you plenty of information before we talk.