A trademark is a word, name, symbol, logo, or device that is used to identify a certain product or service. The purpose of a trademark is to distinguish the product or service with the trademark from other products and services that are competing for market share.
These names, symbols, logos or devices are the things that create the brand identity of a product or service. In most circumstances, trademarks can be protected from infringement and counterfeiting, or use by others.
When Can a Trademark Be Protected?
In order for a trademark to be protected, that trademark must be:
- Registered with the United States Patent and Trademark Office (USPTO), which is the federal agency charged with overseeing the registration of trademarks;
- Attached to a product or service offered in the marketplace, and
- Be appropriately distinctive.
What Are the Levels of Distinctiveness for Trademarks?
Trademarks can be categorized into five distinctive groups. The first two groups, generic and descriptive, provide no trademark protection. In order for a trademark to be protected, it must fall into one of the last three groups. The groups for trademark distinctiveness are:
Generic trademarks are not given trademark protection. Generic trademarks are those that use words, names, symbols, logos, or devices that are of common use in distinguishing the product to which they are attached. An example would be using the word “fruit” as a trademark for an apple. “Fruit” would not be trademark protected because it is a commonly used designation for an entire class of products and it only explains the category that includes the apple. It is a generic term.
Descriptive trademarks also are not given trademark protection. Descriptive trademarks are those that use words, names, symbols, logos, or devices that are commonly used to describe the product or service to which they are attached. An example would be using the word “fax” as part of a brand name for a home communication system. “Fax” is a word commonly used to refer to a method of communicating in print and the thing that is communicated with the method. If it were used to identify some specific product or service, it would not not be trademark protected.
The suggestive trademark classification is a gray area. Trademarks that are suggestive are given trademark protection, but it can be difficult to differentiate them from descriptive trademarks. The main difference is that suggestive trademarks require that a consumer use their imagination to identify the nature of the product or service, rather than having its name, symbol, or logo explain everything clearly and unmistakably.
Arbitrary trademarks are very similar to fanciful trademarks. The main difference would be the word, name, symbol, logo, or device used to distinguish the goods can also be used to describe something entirely different. Arbitrary trademarks are still given trademark protections.
An example is the Ralph Lauren Corporation’s “polo player” logo on a variety of products from perfume to T-shirts. A polo player might be used in the description of the sport of polo, but its connection with a range of products for the male consumer makes it distinctive enough to be given trademark protection.
Trademarks that are within the fanciful class are generally the most unique trademarks. They are words, names, symbols, logos, or devices that were made-up or invented exclusively for the product to which they are attached. The highest level of trademark protection is given to fanciful trademarks. An example of a fanciful trademark would be Apple’s iPod, because it can describe no other device. It is a completely novel trademark name that was created for use on only one distinctive product.
The USPTO divides trademarks into 45 different classes. There are 34 classes for products, and 11 for services. These classes are used by the USPTO to help differentiate and keep track of the many thousands of new trademarks that it registers each year. The classes are as follows:
- Cleaning Substances;
- Industrial Oils;
- Common Metals;
- Hand Tools;
- Computers and Scientific Devices;
- Medical Supplies;
- Precious Metals;
- Musical Instruments;
- Paper Goods;
- Rubber Products;
- Leather Goods;
- Building Materials;
- Household Utensils;
- Ropes and Textile Products;
- Yarns and Threads;
- Lace and Embroidery;
- Games and Sporting Goods;
- Meat, Fish, Poultry;
- Coffee, Flour, Rice;
- Grains, Agriculture;
- Beers and Beverages;
- Alcoholic Beverages;
- Tobacco Products;
- Advertising and Business Services;
- Insurance and Finance Services;
- Construction and Repair Services;
- Telecommunications Services;
- Shipping and Travel Services;
- Material Treatment Services;
- Education and Entertainment Services;
- Science and Technology Services;
- Food Services;
- Medical and Vet Services;
- Legal and Security Services.
Trademark examiners for the USPTO and trademark attorneys who represent trademark applicants sort documents, such as trademark applications, into these classes, according to the description of the goods or services to which the marks apply. The same trademark or service may be assigned to several different classes depending on the products or services to which it is going to apply. Some countries permit several classes to be registered in the same document. Of course, there are fees charged for each classification, whether for an initial application or a later application for renewal.
A person may want to use a single trademark to cover more than one product or service. These products or services may then come within more than a single class, for example, furniture and building materials. If a person wants one trademark to cover different products or services that fall into more than one class, they should be aware that additional fees are required for each additional class to which a trademark application applies.
When a person wants to register a trademark, they need to submit their application in the proper class. If a person seeks to register a trademark in the wrong class, their application is canceled and the filing fee is not refunded. For example, if a person seeks to register a mark for a bedspread in the “furniture” category, the USPTO will deny the application, since the product is not relevant to the “furniture” class. So getting the classification right before starting the application process saves time and expense. An applicant should review all of the classes that may be appropriate in order to identify the correct one.
The second way in which the classification system is important is to determine whether two different goods or services that are associated with different trademarks are too closely related. If the two trademarks are so closely related to each other that they are likely to be marketed in the same channels and sold to the same consumer, the USPTO may disallow the trademark application that is second in line or submitted after the other one.
The reason for this is that if one of the two trademark owners plans to pursue a potential infringer, it may be too difficult if two trademarks are too closely related.
Do I Need an Attorney?
As you can see, applying for a trademark can be tricky. It is highly recommended that you consult a trademark attorney. because of the complexity of the issue. Or, if you own a trademark and someone has infringed upon it, or if you have been sued for infringing on another’s trademark, you want to consult an experienced intellectual property attorney.
An intellectual property attorney will be able to differentiate the trademark, explain the relevant issues, and help to defend your rights.