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Arbitrary Trademarks – AN EASY GUIDE with Examples

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An arbitrary trademark is a word that has a dictionary meaning, but that meaning is not related to the product or service its used for. Arbitrary trademarks never describe products or services.

All About Arbitrary Trademarks

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to arbitrary trademarks. 

Arbitrary trademarks are an important part of branding for many businesses. They can be strong trademarks.

By choosing the right arbitrary trademark and taking steps to protect it, you can ensure that your business has the exclusive right to use it. 

In this easy guide, we explain arbitrary trademarks, give some tips on choosing the right arbitrary trademark for your business, and show you how to protect your arbitrary trademark.

We’ll also answer frequently asked questions about arbitrary trademarks along the way.

Let’s get started!

CONTENTS

> Arbitrary Trademarks Explained

> How Arbitrary Trademarks Work

> Arbitrary Trademark Examples

> Arbitrary Trademark Advantages

> How to Choose Arbitrary Trademarks

> How to Protect Arbitrary Trademarks

> Condensed Summary

> Frequently Asked Questions

1. About Arbitrary Trademarks

What is an Arbitrary Trademark?

An arbitrary trademark is a word or image with a known meaning, but that meaning is not related to the product or service with which it is used. Arbitrary trademarks are a type of trademark that use words or designs that have no connection to the products or services being offered. So, arbitrary trademarks have dictionary meanings, but those meanings are not associated with the products they brand.

Some well-known examples of arbitrary trademarks are “Nike” for sneakers, “Amazon” for online shopping, and “Apple” for computers. As you can see, these brands have taken words with dictionary definitions and used them in a way unrelated to their products.

When is a Trademark Arbitrary?

A trademark is arbitrary when it can be found in a dictionary and its meaning is unrelated to the product or services with which it is used.

What Makes a Trademark Arbitrary?

The test for whether a trademark is arbitrary is:

  1. Does the mark have a dictionary or commonly known meaning?
  2. Is that meaning connected or disconnected from the product with which it is used?

If a trademark can be found in the dictionary and its defined meaning is unrelated to the products or services it brands, then it is an arbitrary trademark. If a mark is a made-up word or conveys something about the product, it is not an arbitrary trademark.

How Do Arbitrary Trademarks Differ From Other Types of Trademarks?

Arbitrary trademarks seem “out of context” with the products with which they are used, and this “discontinuity” is the hallmark of an arbitrary trademark. Other trademarks are made up words, suggest features of products/services, or describe them.

What is Not an Arbitrary Trademark?

Fanciful Trademarks: words or images that do not have a dictionary meaning. They are “made up” or “invented” for the sole purpose of branding a product or service. They are the strongest trademarks and are entitled to the most protection by courts and the USPTO.

Suggestive Trademarks: words or images that allude to or hint at something about the product or service with which it is used. They require some imagination, thought, or perception to make that connection. They are protectable trademarks and entitled to protection by courts and the USPTO.

Descriptive Trademarks: words or images that directly convey something about the product or service they brand. Descriptive marks are only entitled to protection when the owner can show that consumers recognize them as a brand after some period of exclusive use.

Generic Trademarks: words or images that stand for entire categories or category of products. Generic marks are not protected by trademark law.   

Are Arbitrary Trademarks Good?

Yes, arbitrary marks are strong trademarks.  Also, they tend to be easier for people to remember and are the second most likely type to pass federal registration standards.

2. How Arbitrary Trademarks Work

Arbitrary trademarks work by creating a unique association between a particular word or logo and your brand. Because the word or logo has no relation to your product or service, consumers will only be able to associate it with your brand. This protects you against competitors trying to use a similar-sounding word or logo.

For example, let’s say you own a clothing company and arbitrarily trademarked the word “Sapphire.” If another clothing company comes along and tries to use the word “Sapphire” for its products, you could take legal action against them because consumers would be confused about which brand is which.

The same would be true if someone tried to use a similar-looking logo. Let’s say your logo is a blue diamond shape. If another company started using a green diamond shape for its own products, you could again take legal action because consumers might confuse the two brands.

For an arbitrary trademark to be fully protected, it must be registered with the U.S. Patent and Trademark Office. Once registered, you will have exclusive rights to use the word or logo for your brand.

3. Arbitrary Trademark Examples

Arbitrary trademarks are a very strong category of trademark. Arbitrary marks are memorable and the second most likely to pass federal registration standards.

These are 20 examples of arbitrary trademarks:

  • Axe (body spray)

  • Adobe (software)

  • Amazon (online marketplaces)

  • Apple (consumer electronics and tech company)

  • Canon (cameras and printers)

  • Coach (luxury accessories)

  • Camel (cigarettes)

  • Daisy (BB guns)

  • Delta (airlines)

  • Dominos (pizza)

  • Dove (soap)

  • Ford (trucks and automobiles)

  • Gap (clothing)

  • Google (search engines)

  • Nike (footwear)

  • Puma (footwear)

  • Shell (gas and filling stations)

  • Subway (sandwiches)

  • Tide (laundry detergent)

  • Whirlpool (appliances)

Each of these words can be found in a dictionary. Nonetheless, those dictionary meanings are unrelated to the branded products with which the marks are used.   

4. Arbitrary Trademark Advantages

There are many advantages to having an arbitrary trademark. First, because they are not descriptive or suggestive, they are entitled to a broad scope of protection. This means that you can prevent others from using your trademark for similar goods or services even if they are not identical. Second, arbitrary trademarks are often very strong and distinctive. Because they are not descriptive or suggest any connection to the underlying goods or services, customers are likely to remember them better and associate them with a single source. Finally, arbitrary trademarks can be very valuable because they can last indefinitely as long as you continue to use them in commerce and take steps to protect them from infringement.

5. How to Choose Arbitrary Trademarks

How to Choose a Suggestive Trademark

Picking the right arbitrary trademark is essential for your business. There are a few key factors to consider when choosing an arbitrary trademark. First, you want to make sure that the trademark has a commonly known meaning or can at least be found in a dictionary. Second, you want to ensure that the meaning of your mark does not convey or even hint at a feature or quality of your product. Third, you want to ensure that the trademark is not too similar to anyone else’s. This could result in a likelihood of confusion and could lead to your trademark being invalidated.

Hierarchy of Trademarks

The sole functions of a trademark are to identify the source of a product or a service and to distinguish them from the competition. A distinctive trademark performs this function. A distinctive trademark is strong.

It turns out that some marks have a natural tendency to be distinctive. Courts and the U.S. Patent and Trademark Office (USPTO) judge this tendency using the following hierarchy of trademarks:

Fanciful: (most distinctive) a term without a dictionary meaning that is invented for the sole purpose of branding a product or service. They are the strongest trademarks and are entitled to the most protection by courts and the USPTO.

Arbitrary: (highly distinctive) a term with a dictionary meaning that is not related to the product or service with which it is used. They are strong trademarks and entitled to broad protection by courts and the USPTO.

Suggestive: (distinctive) a term that alludes to something about the product or service with which it is used and requires some imagination, thought, or perception to make that connection. They are trademarks and are entitled to protection by courts and the USPTO.

Descriptive: (potentially distinctive) a term that directly conveys something about the product or service they brand. Descriptive marks are only entitled to protection if the owner can show that consumers recognize them as a brand after some period of exclusive use.

Generic: (never distinctive) the common name for a category of product – cannot be trademarked.

As a general rule, distinctive trademarks are preferable because they tend to be stronger and easier to register and protect.

What Are the Five Categories of Trademarks?

These five categories are:

    • Arbitrary trademarks
    • Fanciful trademarks
    • Suggestive trademarks
    • Descriptive trademarks
    • Generic trademarks

6. How to Protect Arbitrary Trademarks

Are Arbitrary Marks Protected?

Yes, arbitrary marks are protected. Federal courts have found that arbitrary marks are entitled to protection under Trademark Law.

How to Make Sure Your Arbitrary Trademark is Fully Protected

There are a few steps that you can take to make sure that your arbitrary trademark is protected. First, you should register it with the U.S. Patent and Trademark Office. This will give you the complete protection that you are entitled to under trademark law. Second, you should use your trademark in commerce. This will help put the public on notice of your trademark ownership. Finally, you should monitor for unauthorized use of your trademark. If you see someone using it without your permission, you can take steps to stop them.

Can You Register an Arbitrary Trademark?

Yes, you can register an arbitrary trademark with the USPTO.

To be eligible for registration, an arbitrary trademark must be distinctive, non-descriptive, and capable of identifying the source of the goods or services. Read about more of the trademark requirements here.

Arbitrary marks are generally registrable. They belong to the category of strong trademarks known as inherently distinctive marks. Assuming all other conditions for registration are satisfied, an inherently distinctive mark is registrable without a showing of acquired distinctiveness.

Are Arbitrary Trademarks Inherently Distinctive?

Yes, arbitrary trademarks are “inherently distinctive,” meaning their distinctiveness is legally presumed. Arbitrary trademarks are considered distinctive enough to function as trademarks through proper use alone, without evidence of how well consumers recognize them.

Do Arbitrary Trademarks Need Secondary Meaning?

No, arbitrary trademarks do not need secondary meaning because they are inherently distinctive. They can be registered and protected without proof that customers identify with a particular company through use over time.  

Arbitrary marks are registrable without a showing of acquired distinctiveness, assuming all other conditions for registration are met.

The Benefits of Registering an Arbitrary Trademark

There are several benefits to registering an arbitrary trademark. First, it allows you to protect your trademark fully. Second, it gives you the exclusive right to use your trademark. This means that no one else can use it without your permission. Third, it will prevent a competitor from registering the trademark and taking it from you. Fourth, it ensures that your trademark does not infringe on anyone else’s trademark. Fifth, it puts the public on notice of your trademark ownership, which helps deter others from trying to use it.

Read about all of the advantages that come with federal trademark registration here.

7. Condensed Summary

An arbitrary trademark is a word or phrase that has no relationship to the product or service it’s used for. For example, Apple is an arbitrary trademark for computers and other electronics. Other examples of arbitrary trademarks include Amazon (online retail), Mercedes (automobiles), and Nike (athletic apparel).

The reason companies choose arbitrary trademarks is because they are easy to remember and they stand out from the crowd. When you hear an arbitrary trademark, you’re likely to remember it long after you’ve heard it. 

There are several benefits that come with having an arbitrary trademark. First, as we just mentioned, these types of trademarks are easy to remember. This is important because it helps customers remember your brand and come back to you when they need your products or services.

Second, since these trademarks are so distinctive, they can act as a powerful marketing tool. They can help you stand out from your competitors and make your brand more recognizable. And last but not least, arbitrary trademarks are very strong from a legal standpoint.  

8. Frequently Asked Questions

1. Is Apple an arbitrary trademark?

Yes, Apple is an arbitrary trademark because the word apple has a dictionary meaning (a fruit), and that meaning is not related to technology devices and/or a technology company.

2. Is Nike an arbitrary trademark?

Yes, Nike is an arbitrary trademark because the word Nike has a dictionary meaning (the Roman god of war), and that meaning is not related to footwear and/or sports equipment.

3. Can a trademark be arbitrary?

Yes, a trademark can be arbitrary. Arbitrary trademarks are one of five categories of trademarks. They are generally very strong, protected by courts, and eligible for registration by the U.S. Patent and Trademark Office. Arbitrary trademarks are a good choice to represent any brand.

4. What is an example of an arbitrary trademark?

Examples of arbitrary trademarks include TIDE (for laundry detergent) and WHIRLPOOL (for home appliances). Any trademark that has a dictionary meaning that is disconnected from goods/services for which it is used is an arbitrary trademark.

An arbitrary trademark is one that has a meaning with no connection to the product or service it represents.

5. Can arbitrary trademarks be registered?

Yes, arbitrary trademarks can be registered. Arbitrary marks are generally registrable, and the U.S. Patent and Trademark Office accepts and grants applications to register arbitrary trademarks. Arbitrary marks are considered inherently distinctive and are given some of the broadest protections by courts and the USPTO.

6. What type of trademark is Nike?

The Nike trademark is a fanciful mark because it is found in a dictionary and does not describe or convey anything about sports gear, for example.

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COMPLETE GUIDE TO TEAS PLUS

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The TEAS Plus option is faster and less expensive than the regular filing option, but has more requirements and potential pitfalls, especially for the first time filer. 

Guide to TEAS Plus

By Michael Kondoudis, Trademark Attorney

This is our COMPLETE guide to TEAS Plus, one of the two trademark application filing options offered by the U.S. Patent and Trademark Office through its online filing system.  

The TEAS Plus option is faster and less expensive than the regular filing option, but has more requirements and potential pitfalls, especially for the first time filer. Also, not every application qualifies for this streamlined option.

If you want to quickly learn the ins and outs of TEAS Plus, then this guide is for you.

Let’s get started.   

CONTENTS

> About TEAS

> The Requirements for TEAS Plus

> TEAS Plus vs TEAS Standard

> The Benefits of TEAS Plus

> When to Use TEAS Plus (and when not)

> Frequently Asked Questions

1. About TEAS

What is TEAS?

“TEAS” stands for “Trademark Electronic Filing System.” The U.S. Patent and Trademark Office (“USPTO”) encourages all applicants to file their trademark applications online, and TEAS is the USPTO’s online application filing system. TEAS offers two filing options: TEAS Plus and TEAS Standard. Both options provide a pathway to seek registration, but the USPTO designed the TEAS Plus application to provide a less expensive and more streamlined option.

What is TEAS Plus?

TEAS Plus is one of two filing options offered in the USPTO’s Trademark Electronic Filing System (“TEAS”). The other is TEAS Standard. TEAS Plus has more up-front requirements than the TEAS Standard option when initially applying to the USPTO but also requires reduced fees per class of goods or services.

TEAS Plus has the lowest filing fee but comes with more requirements than TEAS Standard.

What is a TEAS Plus application?

A TEAS Plus application is a new trademark application filed using the TEAS Plus filing option. TEAS Plus applications register faster than those filed using other options but have more initial filing requirements.

What is TEAS Standard?

TEAS Standard is one of two filing options offered in the USPTO’s Trademark Electronic Filing System (“TEAS”). The other is TEAS Plus. TEAS Standard has fewer up-front requirements than the TEAS Plus option when initially applying to the USPTO but requires higher fees per class of goods or services.

TEAS Standard has a higher filing fee but fewer requirements than TEAS Plus.

What is a TEAS Standard application?

A TEAS Standard application is a new trademark application filed using the TEAS Standard filing option. TEAS Standard applications are more flexible and have fewer initial filing requirements than those filed by TEAS Plus.

2. The Requirements for TEAS Plus

There are two main requirements for TEAS Plus. The two main requirements for TEAS Plus are:

(1) provision of all of the information required by the application form, including the applicable additional statements; and

(2) an accurate description of your goods/services using only pre-approved entries from the USPTO Trademark ID Manual.

3. TEAS Plus vs TEAS Standard

There are several differences between the TEAS Plus and TEAS Standard filing options. These are the main differences:

1. Cost/Filing fees

2. How you identify goods and services

3. When you pay the filing fees

4. Additional technical statements

1. Cost/Filing Fees

The USPTO charges application filing fees for TEAS Plus applications at $250 per class of goods/services. For TEAS Standard applications, the rate is $350 per class of goods/services.

2. How You Identify Goods And Services

Every trademark application must include an accurate listing of the goods and/or services for which registration is sought. A TEAS Plus application filed using the TEAS Plus filing option requires that you build your listing from entries in the USPTO’s Acceptable Identification of Goods and Services Manual (also known as the “ID Manual”).

When you file a TEAS Plus application, you are limited to the options in the Trademark ID Manual to build your listing of goods/services. 

When you file a TEAS Standard application, you can use your own words to build your listing of goods/services.

3. When You Pay The Filing Fees

Every trademark application must be accompanied by an application filing fee, which is based on the number of classes of goods/services implicated by the listing of goods/services in the application.

For TEAS Plus applications, you must pay all application filing fees with your initial application.

For TEAS Standard applications, you can pay the application filing fee for just one class with your initial application and pay the rest later during the examination process. 

4. Additional Technical Statements

A TEAS Plus application must include certain relevant additional statements when they apply to your trademark. You must provide additional statements when:

    • Your mark includes non-English words (you must include an English translation).
    • Your mark includes non-Latin characters (you must include a transliteration and either an English translation or a statement that the transliterated term has no meaning in English).
    • Your mark includes color (you must include a claim that color is a feature of the mark and a statement naming the color and describing where the color appears on the mark).
    • You have previously registered the same mark (you must state that you claim ownership of the prior registration).
    • Your mark includes the name or likeness of a living person (you must identify the individual and provide the individual’s consent).

A TEAS Standard application filed using the TEAS Standard option permits an applicant to make these statements later – when they apply.

4. The Benefits of TEAS Plus

It is your choice whether to use the TEAS Plus option or the TEAS Standard option. A TEAS Plus application lowers your filing fee and increases the likelihood of your application moving more quickly toward publication and registration. Also, the success rate of TEAS Plus applications is higher than TEAS Standard applications. So, the TEAS Plus option is a way to decrease the risk of refusal of your application by the USPTO.

5. When to Use TEAS Plus

When to use TEAS Plus

You should file a TEAS Plus application using the TEAS Plus filing option when you can:

(1) provide all of the information required by the application form, including the additional statements; and

(2) accurately describe your goods/services using pre-approved entries from the USPTO Trademark ID Manual.

If you can make all required additional statements and your goods/services in the USPTO’s Trademark ID Manual, then TEAS Plus is probably the better filing option.

When not to use TEAS Plus

You should not file a TEAS Plus application using the TEAS Plus filing option when:

(1) The USPTO’s Trademark ID Manual does not include an accurate pre-approved listing for your goods/services; and

(2) You don’t have all the information required by the application form, including the additional statements required by the TEAS Plus option.

If you are unsure whether additional statements are required or need a customized listing of goods/services, then TEAS Standard is probably the better filing option.

Which Types of Trademarks Qualify for TEAS Plus

Only applications for trademarks and service marks seeking registration on the Principal Register are eligible for TEAS Plus. 

If you are filing an application for any of the following types of trademarks, you must use the TEAS Standard option:

(1) certification marks

(2) collective trademarks and service marks

(3) collective membership marks

(4) Applications for registration on the Supplemental Register

6. Searching the USPTO’s Trademark ID Manual

What is the USPTO’s Trademark ID Manual?

The USPTO’s Trademark ID Manual is a searchable database of pre-approved identifications of goods and services.

How to Search the USPTO’s Trademark ID Manual

You can Searching the USPTO’s Trademark ID Manual by following these four steps:

1. Navigate to the Manual at https://idm-tmng.uspto.gov/id-master-list-public.html

2. Enter your search terms in the search box and select the search icon

3. Review the search results. ID Manual displays search results in a table format.

4. Sort the search results by clicking on the various column headers of the results table (optional).

7. Do You Need a Trademark Lawyer?

Do You Need a Trademark Attorney to Use TEAS Plus?

No, but the U.S. Patent and Trademark Office strongly recommends that all applicants work with a trademark attorney – for several reasons. (see below).
Remember, the trademarking process is much more than just filling out online forms (that’s the easiest part of the process). The USPTO will only grant your application after meeting all of their many legal and procedural requirements.

USPTO_Warning

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Why Should You Consult a Trademark Attorney to File Your Application With TEAS?

Filing a trademark application with the USPTO to register your trademark starts a legal process that can get complicated, expensive, and confusing. Working with a trademark attorney can make the process smoother, faster, and result in better protection.

Also, studies show that working with a trademark attorney can increase your chances of successfully trademarking your brand by over 50%.

8. Frequently Asked Questions

1. Should I file TEAS plus or standard?

TEAS Standard is the better option if you need a custom description of your goods and services.  TEAS Plus is the better option for first-time or inexperienced applicants who can describe their goods and services using the U.S. Patent and Trademark Office’s Trademark ID manual.

2. Can I use TEAS Plus for intent to use?

Yes, you can file intent to use applications using the TEAS Plus application option. 

3. What is TEAS in USPTO?

TEAS stands for the Trademark Electronic Application System, which is the U.S. Patent and Trademark Office’s online filing system.  TEAS permits you to submit application forms directly to the USPTO over the Internet and pay application filing fees by credit cards, electronic funds transfer, or through an existing USPTO deposit account.

4. What does TEAS stand for trademark?

TEAS stands for the Trademark Electronic Application System, which is the U.S. Patent and Trademark Office’s online filing system.  TEAS permits you to submit application forms directly to the USPTO over the Internet and pay application filing fees by credit cards, electronic funds transfer, or through an existing USPTO deposit account.

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Incontestable Trademarks – AN EASY GUIDE

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After five years or more straight years of use, the owner of a registered trademark can apply to make their trademark immune from most legal attacks by filing a Declaration of Incontestability.

Incontestable_Trademarks

By Michael Kondoudis, Trademark Attorney

This is our COMPLETE guide to incontestable trademarks.

In this guide, we explore what incontestability means for a trademark, when and how to gain incontestable status, and the advantages the incontestable trademarks enjoy.

So, if you need to quickly learn about incontestable trademarks, read on – this guide is for you.

 

CONTENTS

> Trademarks + Incontestability

> Section 15 Declarations of Incontestability

> Why Incontestability Matters

> Condensed Summary of Incontestability

I. TRADEMARKS + INCONTESABILITY

What is a Trademark?

A trademark is an exclusive right that a business or individual has to use a name, logo, slogan, or other symbol to identify products and services. Trademarks help protect a brand’s identity from competitors who may try to copy it while also preventing confusion among consumers. Trademarks protect brands.

What is a Registered Trademark?

A registered trademark is a trademark that has been registered with the United States Patent and Trademark Office (USPTO), which grants exclusive and nationwide rights to use the trademark.

How Do You Get a Registered Trademark?

You get a registered trademark by applying to the USPTO (United States Patent and Trademark Office). After registration, trademark owners may display the ® symbol to indicate it is protected by federal law.

What is an Incontestable Trademark?

An incontestable trademark is a special type of trademark that is immune from challenge in court under normal circumstances. When a mark is declared incontestable, it can only be challenged on specific, limited grounds. 

What Does Incontestability Mean?

In trademarks, incontestability means immunity from most legal challenges. Incontestable trademarks can only be challenged when they are no longer in use, were obtained by lying to the USPTO (U.S. Patent and Trademark Office), or have become generic (e.g., Aspirin and Jacuzzi).

What are the Advantages of an Incontestable Trademark?

Incontestability enhances and strengthens trademark rights by making it harder to challenge them.

The primary advantage of having an incontestable trademark is its substantial legal protection against potential challenges. If someone accuses you of infringing on their mark, it’s much harder for them to prove their case if your trademark is incontestable. Incontestable trademarks are well protected against common legal attacks should any disputes arise.

Trademark incontestability solidifies your trademark rights and makes them more robust. Incontestability carries significant weight in court.

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What Does It Mean to Have an Incontestable Trademark?

Having an incontestable trademark means that many aspects of a registered trademark cannot be challenged in court. Some of the aspects of an incontestable trademark cannot be attacked: 

The Validity and Registration of your mark (the trademark must be presumed to be valid and enforceable)

Your Ownership (the trademark registration must be presumed to be accurate)

Your Exclusive Rights to Use the mark for the goods and services in the registration

Incontestability also means that a registered trademark can only be challenged in three ways:

The registration was obtained through fraud

The trademark is abandoned (no longer in use)

The trademark is generic for a type or entire category of products

Thus, incontestability strengthens a registered trademark by limiting attacks against it in a dispute.

How Do You Get an Incontestable Trademark?

You file a Section 15 Declaration of Continued Use with the USPTO (U.S. Patent and Trademark Office).

To get an incontestable trademark, a trademark owner must file a Declaration of incontestability (also known as a “Section 15 Declaration”) with the U.S. Patent and Trademark Office. Also, the trademark owner must pay a fee.

When Should You Get an Incontestable Trademark?

According to most authorities, you should get an incontestable trademark as soon as your trademark is eligible. Since you can seek incontestability for your registered trademark at any time after five years of continuous use, most trademark owners seek incontestability on the “five-year” anniversaries of their trademark registrations.

II. SECTION 15 DECLARATIONS OF INCONTESTABILITY

What is a Section 15 Declaration?

A Section 15 Declaration, also known as a “Declaration of Incontestability,” is a sworn statement filed by the trademark owner and placed on the USPTO’s (U.S. Patent and Trademark Office’s) Principal Register of trademarks.

A Section 15 is a declaration filed with the U.S. Patent and Trademark Office to secure incontestable status for your registered trademark. A Section 15 declares your rights to a registered trademark to be incontestable and states that all requirements for incontestability have been met.

TEAS_Section_15

Section 15 Declarations can be filed online at the USPTO Website.

Do You Have To File a Section 15 Declaration of Incontestability?

No, a trademark owner is never required to file a Section 15 Declaration. Section 15 Declarations of Incontestability are not mandatory.

While not mandatory, a Section 15 Declaration provides important legal and practical advantages for your trademark. This declaration, once approved, renders your trademark incontestable and significantly strengthens it.

Section 15 Declarations: Requirements and Timing

Filing a Section 15 Declaration comes with specific requirements and timing considerations.

1. The trademark must be used in interstate commerce: For a trademark to be registered, it must be used in interstate commerce. This means that the trademark must be used in connection with the sale of goods or services that cross state lines.

2. The trademark must be registered with the USPTO: Only trademarks registered on the USPTO’s Principal Register are eligible for incontestable status.

3. The trademark must be distinctive: For a trademark to be registered, it must be distinctive (i.e., not generic). This means that the trademark must be capable of distinguishing the goods or services of one company from those of another company.

4. The trademark must have been in continuous use for five years: For a trademark to be incontestable, it must have been in continuous use for five years. This means that the owner of the trademark must have been using the mark continuously during that time period.

5. There must be no evidence that the trademark is generic or has been abandoned: For a trademark to be incontestable, there must be no evidence that the mark is generic or has been abandoned. A mark is generic if it refers to a class of goods or services. A mark is abandoned if its use has been discontinued with no intention of resuming such use in the future.

6. There must be no challenges to the validity of the registration: For a mark to be incontestable, there can be no adverse decisions or pending proceedings challenging the validity of the registration in a court or other judicial body.

7. The trademark owner must file a Section 15 Declaration of Incontestability with the USPTO: Incontestability is not automatic.

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What Is The Cost to Get an Incontestable Trademark?

Currently, the U.S. Patent and Trademark Office charges a fee of 200 USD per class of goods or services.

III. WHY INCONTESTABILITY MATTERS

Should I Get an Incontestable Trademark? 

Yes. Most authorities agree that trademark owners should seek incontestable status for their trademarks. There are significant benefits to incontestable status. Incontestable trademarks come with enhanced protections that make enforcing trademark rights easier and less expensive if there is a dispute. For example, many common legal defenses are barred by incontestability, such as challenges of descriptiveness.

If you meet the requirements to make your trademark incontestable, you will have a strong defense against any challenges to your mark.

Why Incontestable Trademarks Matter for Small Business Owners

Having an incontestable trademark as a small business owner is essential:

  • Legal protection: It offers a robust defense against accusations of trademark infringement, which can be expensive and time-consuming.
  • Brand reputation: An incontestable trademark maintains your brand’s reputation by preventing competitors from challenging your right to use it.
  • Proof of ownership: Owning an incontestable trademark is conclusive proof of ownership, simplifying legal disputes that may arise.

IV. CONDENSED SUMMARY 

After five years of consecutive use from the date of federal registration, a trademark may be declared incontestable. An incontestable mark is immune from most legal challenges except when it has become generic or abandoned for nonuse or if the registration was acquired fraudulently. To secure incontestability, a trademark owner must file a Declaration of Incontestability with the U.S. Patent and Trademark Office. Declarations of Incontestability are usually filed sometime between the fifth and sixth anniversaries of federal trademark registration.

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How to Copyright a Restaurant Name

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The correct way to protect the name of a restaurant is to trademark it.  Restaurant names are not eligible for copyright protection.

Copyrights for Restaurants

     By Michael Kondoudis, Restaurant Trademark Lawyer

This is our QUICK guide to copyrights for restaurant names.

As a restaurant owner, a memorable and unique name is essential for your brand identity. It’s just as crucial as the menu and service you provide. With so much love and work poured into your business, you need to safeguard your restaurant name. But how? This blog post will explain how to legally protect your restaurant name.

Let’s jump in!

I. Copyrights For Restaurant Names

Can You Copyright the Name of a Restaurant?

No, you cannot copyright the name of a restaurant. Names, including the name of a restaurant, do not qualify for copyright protection.  Examples of names that cannot be copyrighted include:

  • The name of an individual (including pseudonyms, pen names, or stage names)
  • The name of a business or organization
  • The name of a band or recording artist
  • The name of a product or service
  • The name of a character
  • A domain name or URL

The way to protect a name, including the name of a restaurant, is with a trademark. Read our guide to trademarking your restaurant name (and logo).

How to Copyright a Restaurant Name

In short, you cannot copyright the name of a restaurant. Names, including the name of your restaurant, cannot be copyrighted. But you can often TRADEMARK the name of a restaurant. 

How Do You Protect a Restaurant Name?

The best way to protect a restaurant brand is to trademark the name, logo (artwork), and slogan that you use to promote it. Trademarks are the easiest and best way to protect any brand. Read our guide about when you can trademark a restaurant name.

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Why You Should Protect the Name of Your Restaurant?

The name of your restaurant is the cornerstone of your restaurant brand, and branding in the restaurant business is as important as your food and service. 

Read more about why you should trademark your restaurant’s name.

II. Copyrights vs. Trademarks

Many people often confuse copyrights and trademarks. It’s important to understand the difference between the two to effectively protect your restaurant name.

What is a Copyright?

A copyright is a type of intellectual property that protects creative works, including performances, musical, and artistic works. Examples of copyrightable works include novels, songs, paintings, photography, and movies.

Since the name of a restaurant is not a creative work, it does not qualify for copyright. Read more about the differences between trademarks and copyrights.

What is a Trademark?

A trademark is a signal that distinguishes and differentiates goods or services from one enterprise from those of others. Trademarks represent and protect brands, including restaurant brands. The most common trademarks are words (names), phrases, and logos. 

Why is a Trademark the Right Way to Protect a Restaurant Name?

To protect your restaurant name, you need to trademark it instead of copyrighting it. Trademarking your restaurant name confirms your legal ownership of it and is the surest way to prevent anyone else from trademarking it in the restaurant, hospitality, and good service industries.  

III. How to Get a Restaurant Trademark

You get a trademark for a restaurant name by submitting an application to the U.S. Patent and Trademark Office and completing the examination process, which takes more than a year.  You can read our guide about how to trademark a restaurant name here.

How Do You Trademark a Restaurant Name?   

To trademark a restaurant name, you need to apply to the U.S. Patent and Trademark Office.  Learn about how here. 

A word of warning – filing an application starts a Federal legal proceeding that can be very confusing and complicated.  For this reason, and many others, the U.S. Patent and Trademark Office recommends that you work with a trademark attorney.  Learn why.

Do You Need a Trademark Lawyer?

Federal registration of the name of your restaurant ensures that it is protected.  Working with an experienced trademark attorney maximizes your chances of success during the application process; maximizes your trademark protections; and minimizes how long it will take.  Learn why here.

Working with an experienced trademark attorney often makes the difference between success and failure when it comes to trademark registration. Studies of USPTO data show that applicants who work with a trademark attorney are 50% more likely to register their restaurant names. 

In fact, the U.S. Patent and Trademark Office recommends applicants work with trademark attorneys:

“we strongly encourage you to hire a U.S.-licensed attorney who specializes in trademark law to guide you throughout the application process.”

www.uspto.gov

USPTO_Warning

Final Thoughts

Protecting your restaurant name is an essential part of building a strong brand identity. Don’t leave it unprotected, as your restaurant name is a valuable asset. Remember to choose trademarking over copyrighting and consider working with a trademark attorney to make the process as efficient and successful as possible.

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How Long Do Trademarks Last? – AN EASY GUIDE

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Trademarks can last forever, so long as they are used in commerce and renewed on time every ten years. Trademarks do not expire after a set period of time. 

How long do trademarks last?

By Michael Kondoudis, Trademark Attorney

This is our EASY guide to how long a trademark lasts.

Success in business depends on having the right tools and knowing how to use them. One of those tools is a trademark. As long as you keep your trademark in good standing, it can protect your brand from being stolen, copied, or diluted. They have tremendous value, but how long does a trademark last? 

If you want to know for how long a trademark lasts and whether a trademark expire, then this guide is for you.

Let’s jump in!  

CONTENTS

This article discusses issues that every business needs to know about the duration of trademarks, including:

→ What is a trademark?

→ How long trademarks last

→ How long trademark protection lasts

→ Trademark renewals

→ Frequently asked questions

I. About Trademarks

What Is A Trademark?

Trademarks are words, phrases, and logos that businesses use to identify their products and services. Trademark protection provides the owner with the exclusive right to use a particular mark in connection with the sale of goods or services.

The main purpose of trademarks is to prevent confusion in the marketplace about who is selling what product or service.

II. How Long Do Trademarks Last

How Long Do Trademarks Last?

Trademarks do not have expiration dates. Trademarks can last forever so long as they are put to use and renewed on time. A federal trademark lasts 10 years from the date of registration, with a potentially unlimited number of 10-year renewal terms. So, every 10 years, the owner of a federal trademark registration must renew it with the U.S. Patent and Trademark Office (USPTO).     

Trademarks last as long as they are used in commerce to brand products or services. Trademarks do not have expiration dates and do not expire after a set period of time, unlike patents and copyrights. So, any trademark can last as long as it is used to represent a brand.

How long do trademarks last in the US?

In the United States, a trademark can last forever, so long as it is used in commerce and renewed on time every ten years. To renew a registered trademark, the owner must file the maintenance documents with the United States Patent Trademark Office (USPTO) and meet certain legal requirements.

How long do registered trademarks last?

Registered trademarks have initial terms of 10 years. So, a registered trademark lasts for 10 years from the date of registration. But a registered trademark can also be renewed for unlimited successive 10-year terms, so long as the owner meets the legal requirements for renewal and files all necessary documents on time. So, a registered trademark lasts for 10 years and can be renewed for additional 10-year terms.

How Long Is A Trademark Good For?

A trademark can be good for an indefinite length of time. Trademarks do not have expiration dates. A trademark can last indefinitely if it continues to be used to represent a brand and is properly maintained. So, to keep your trademark alive, you need to continue using it in commerce and renew it every 10 years with the US Patent and Trademark Office. Trademarks are good indefinitely if they are continually used to brand products and services and renewed with the USPTO.

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What Is The Term Of A Trademark?

The term of a federal trademark registration is 10 years. However, you can renew your trademark registration indefinitely as long as you (1) continue to use your mark in commerce and (2) file the required documents and evidence with the USPTO. On every tenth anniversary of the registration date, the owner has to submit to the US Patent and Trademark Office proof that the trademark is in use.

III. Trademark Renewals

How Do I Renew My Trademark?

To renew your trademark, you must file a Section 8 Declaration of Continued Use with the USPTO. This declaration must be filed between the ninth and tenth year after your mark was initially registered. Along with the Section 8 Declaration, you must submit evidence that you are using your trademark in commerce.

What Happens If I Don’t Renew My Trademark?

If you don’t renew your trademark, your registration will be canceled, and your trademark will become abandoned. An abandoned trademark cannot be enforced by its owner, and anyone else can use it. Additionally, if you ever decide you want to register your mark again in the future, you will have to start the process from scratch.

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How Often Do Trademarks Need To Be Renewed?

Trademarks need to be renewed every 10 years.

IV. Condensed Summary

Federally registered trademarks last for ten years, with potentially infinite additional 10-year renewal terms as long as you continue to use them to identify your products or services. So, in the US, a trademark can last indefinitely so long as it is used in commerce to identify and distinguish the source of goods or services. If a trademark is not used for an extended period, it may be considered “abandoned” by the owner and become available for others to use for their brands.

The US Patent and Trademark Office (USPTO) administers federal trademark registrations, and every trademark registration starts with a ten-year term. The trademark owner must renew the trademark registration every ten years to keep it in good standing.

So, a trademark registration will last for 10 years and must be renewed to keep the trademark active. A registered trademark will remain active so long as the owner continues to use it in ordinary commerce and files a renewal application every 10 years to keep the registration active.

Trademarks can last indefinitely as long as they are used in commerce. A trademark’s owner must continue using it to keep the registration alive.

V. Frequently Asked Questions

1. How Long Does Trademark Last?

A trademark can last indefinitely—but only if it is properly maintained. In order to keep your trademark alive, you need to continue using it in commerce and renew it every 10 years with the USPTO. If you stop using your trademark or fail to renew it, your trademark registration can be canceled. If a mark is abandoned, anyone else can use it without repercussions from the original owner. Therefore, it is important to keep track of your trademark and use it regularly in order to keep it alive. In order for a trademark to last indefinitely, its owner must continuously use it in commerce and properly maintain it.

2. Why Should I Register My Trademark?

Registered trademarks are the best kind of trademark because they come with important legal rights. Read our easy guide to why federal trademark registration is so powerful here.  The U.S. Patent and Trademark Office registers federal trademarks. For a trademark to be registered, it must be distinctive and not likely to be confused with another trademark.

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How to Trademark a Name for Free: An EASY Guide

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You can trademark a name for free with a “common law” trademark and establishing a common law trademark doesn’t require any forms or fees. However, you cannot register a trademark for a name for free.

How to Trademark a Name for Free

   By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to trademarking a name for free. 

You may have heard that you can trademark your name for free. Is this true? The answer is both yes and no.

It is possible to get some trademark rights just by using a trademark. But, those  rights are limited and pale in comparison to trademarks registered with the U.S. Patent and Trademark Office. 

In this post, I’ll explain exactly how to trademark a name for free, and this information applies to logos and phrases as well.

So, if you want to learn how to trademark a name for free, this guide is for you.

Let’s get started!

CONTENTS

Part I. Trademarking for free

Part II. All about common law trademarks

Part III. How to get common law trademark rights

Part IV. All about registered trademarks

Part V. How to register a trademark for free

I. TRADEMARKING FOR FREE

How to Trademark a Name for Free

You can trademark a name for free by getting a common law trademark. A common law trademark can be a great way to protect your name without incurring the cost of registration.

Can You Trademark a Name for Free?

Yes, you can trademark a name for free by establishing a “common law” trademark through use of the name in commerce. This means using the name to brand your company, business, product, or service. You cannot register the name for free, however, because the U.S. Patent and Trademark Office charges a filing fee for every new trademark application. So, there is always a fee to register a name.

RELATED: How to Register a Band Name

How to Trademark a Phrase for Free

There is a way to trademark a phrase for free by establishing a common law trademark. A common law trademark can be a great way to protect your phrase without having to pay for registration.

Can You Trademark a Phrase for Free?

Yes, you can trademark a phrase for free by establishing a “common law trademark” simply by using your phrase in commerce. This means using the phrase to brand your business, products, or services.

Is There Such a Thing as Free Trademark?

Yes, you can establish a common law trademark for free.  A trademark registration is never free, however. The U.S. Patent and Trademark Office charges a “filing fee” for every application.

II. COMMON LAW TRADEMARKS

What is a Common Law Trademark?

A common law trademark is not registered with the USPTO but is instead established through use in commerce and taking steps to prevent others from using it.

Common law trademarks are not registered with the government but are still protected under the law.

Common law trademarks are established through use in commerce. They are based on use, through actual use in commerce rather than through registration.

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Enforcement – Flex your trademark rights. Stop copycats.

The Benefits of a “Free” Common Law Trademarks

There are several benefits to common law trademarks.

First, common law trademarks are easier to obtain than federal trademarks. There are far fewer requirements. Common law trademark rights come from use in commerce.

Second, common law trademarks are much less expensive than registered federal trademarks. It is cheaper to establish a common law trademark than to register one with the U.S. Patent and Trademark Office (USPTO).

Third, common law trademark rights can be established in less time than registered trademarks. All that is required is use in commerce.

The Limitations of a “Free” Common Law Trademark

Common law trademarks can provide valuable protection for businesses, but they have limitations. The two most important limitations are geographic and enforcement.

First, common law trademark rights are limited to the geographic area where a mark is used. They are not national, unlike registered trademarks. That means that other businesses outside of your local region could use your name or slogan, and you would be unable to stop them. So, if you plan to expand your business into multiple markets, you should consider registering your trademark with the USPTO.

Second, enforcing common law rights is far more complex and expensive. For example, a trademark owner must prove ownership, validity, and regions of use. In contrast, with registered federal trademarks, these elements of infringement are legally presumed, so enforcement is easier and less expensive. Also, it is presumed that a registered federal trademark is recognized as representing a brand.

The surest way to LEGALLY own your trademark is to register it with the U.S. Patent and Trademark Office. Federally registered trademarks are stronger than common law trademarks.  Read about the advantages of trademark registration here.

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III. HOW TO GET A COMMON LAW TRADEMARK

How to Establish a Common Law Trademark

To establish a common law trademark, you will need to do two things:

1. Use the mark in commerce; and

2. Demonstrate that it has “secondary meaning,” which is to say that it has become associated with your brand in the minds of consumers.

Use in commerce

You have to use the mark in a way that identifies it as being associated with your goods or services. For example, you could use the mark on packaging, labels, signage, or advertisements.

Secondary meaning

This can be shown by promoting the mark through advertising and marketing and ensuring that it is used consistently across all your business’s communications. This can be done by showing that the mark has been in continuous use for a period of time or that it has become well-known among consumers.

Once you have established a common law trademark, you can enforce it against infringements in certain situations. However, note that common law trademarks do have some limitations.

IV. ABOUT REGISTERED TRADEMARKS

What is a Registered Trademark?

A Federal trademark is an enhanced trademark certified by the U.S. government. It’s an enhanced trademark because it comes with exclusivity and nationwide legal rights, preventing anyone else from registering anything similar for your industry.

The United States Patent and Trademark Office (or “USPTO”) is the Federal agency that registers trademarks.

What Are The Benefits of a Registered Trademark?

Federal trademark registration is the ultimate protection for any brand. There is no higher level. That makes a Federal trademark the best insurance against having to rebrand.

Here are just some of the reasons why:

  1. A registered federal trademark is an official confirmation that you own your trademark.
  2. A registered federal trademark comes with the immediate, exclusive, and nationwide right to use your mark.
  3. A registered federal trademark will prevent anyone else from registering it (or anything similar) in your industry.
  4. A registered federal trademark gives you enhanced protection for domain names and social media platforms and access to Amazon’s brand registry.
  5. A registered federal trademark gives you the legal right to use the ® symbol.

Read about ALL of the legal and financial benefits of trademark registration here.

V. HOW TO REGISTER A TRADEMARK FOR FREE

How to Register a Trademark for Free

You cannot register a trademark for free because every application filed with the U.S. Patent and Trademark Office (“USPTO”) must be accompanied by a non-refundable filing fee. This fee is mandatory and is non-refundable. The USPTO filing fee is $250 or $350 per class of goods or services. Therefore, while it is possible to register a trademark without hiring a lawyer, it can never be free.

Can You Register a Trademark for Free?

No, you cannot register a trademark for free because the U.S. Patent and Trademark Office (“USPTO”) charges a filing fee for every application it receives.

Is There Such a Thing as Free Trademark Registration?

No. To register a trademark, you must pay a non-refundable government filing fee to the United States Patent and Trademark Office (“USPTO”). So, free trademark at the federal level is not an option. 

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How Much Does Trademark Registration Cost?

Currently, the U.S. Patent and Trademark Office charges a filing fee for every application.  The current filing fee is at least $250 per application, and often more when many products or services are listed in the application.

The average cost is between $275 and $400 to file a trademark application with the USPTO. However, the actual cost will depend on several factors, including the complexity of the application. Ultimately, the cost of trademark registration will vary depending on the specifics of your situation.

VI. SUMMARY

In the United States, you can establish “common law” trademark rights in a name just by using it to brand your company, products, and/or services. Common law trademark rights are limited and difficult to enforce, however. 

The best way to protect a name is to register it with the U.S. Patent and Trademark Office (USPTO).  Trademark registration is the way to make sure that no one else registers your mark and takes it from you.

 

Common Law Trademarks: Limited Protection

One way to trademark a name for free is by obtaining a common law trademark. This type of protection is established through commerce use and taking important steps to prevent others from using your name. Unlike Federal trademarks, common law trademarks do not require any forms or fees, making it ideal for small businesses on a budget.

However, there are some limitations when it comes to common law trademarks. Two of the most significant challenges are:

  1. Geographic limitations: A common law trademark is usually limited to the geographical area where your business operates. This can be a disadvantage if you plan to expand your business and reach new customers across the country.
  1. Enforcement challenges: Enforcing a common law trademark might be more difficult than a registered one. Without a record of your distinct mark in the government database, disputes could become convoluted and time-consuming.

These are significant drawbacks.

 

Federal Trademarks: Stronger Protection But With Costs

For businesses seeking nationwide protection and legal exclusivity, a Federal trademark may be the better option. Obtaining a Federal trademark involves registering your name or phrase with the U.S. Patent and Trademark Office (USPTO). This enhanced level of protection offers several advantages:

  1. Nationwide legal rights: A federal trademark gives you exclusive rights across the entire country, regardless of the geographical location of your business.
  1. Easier enforcement: With a Federal trademark, disputes are generally more straightforward to manage, as there is an official record of your ownership.

However, when it comes to the cost, there’s one essential fact to note: there is no way to register a Federal trademark for free. Every application filed with the USPTO must be accompanied by a non-refundable filing fee, which ranges from $250 to $350 per class of goods or services.

The process of registering a trademark includes filing an application with the USPTO and the USPTO charges a filing fee for every new trademark application. The application fee is currently $250 per class of goods or services that you list in your application. So, there is no such thing as a free trademark registration.

VII. FREQUENTLY ASKED QUESTIONS

1. Can I trademark a name for free?

No, you cannot register a trademark for free, but you can establish a common law trademark for free by using the name to brand your products. Common law trademarks are free and do not require any paperwork or forms. There is no way to register a name trademark for free because you will always have to pay at least a small fee that covers the costs of examining and processing your trademark application. There is no way to get a federal trademark for free.

 

2. Can I trademark a phrase for free?

No, you can’t register a phrase for free, but you can establish a common law trademark for free by using the phrase to brand your products. Common law trademarks are free and do not require any paperwork or forms. There is no way to register a phrase trademark for free because you will always have to pay at least a small fee that covers the costs of examining and processing your trademark application. There is no way to get a federal trademark for free.

 

3. What is the least expensive way to trademark a name?

The cost to trademark a name is between from $250 to $350 per trademark class. This is the cost to submit your trademark application to the USPTO. The easiest way to submit an application to register your trademark is online, through the USPTO’s Trademark Electronic Application System (TEAS). 

 

4. What is the least expensive way to trademark a phrase?

The cost to trademark a phrase is between from $250 to $350 per trademark class. This is the cost to submit your trademark application to the USPTO. The easiest way to submit an application to register your trademark is online, through the USPTO’s Trademark Electronic Application System (TEAS).  Learn about how to qualify for the lowest filing fee in our guide to TEAS.

 

5. What is the cheapest way to trademark?

There is a free option to get a trademark for your name, logo, or phrase.  The way to get a free trademark is to establish common law trademark rights by using your mark to brand your business, products, or services. Common law trademark rights have limitations, but they can offer some protection for names, logos, and phrases.

 

6. Can you trademark things for free?

Yes, you can establish common law trademarks and no cost. However, you cannot register a trademark for free. The U.S. Patent and Trademark Office always charges a filing fee.

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Suggestive Trademarks – AN EASY GUIDE with Examples

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Suggestive trademarks hint at aspects of products and services but do not describe them. They “require imagination, thought, or perception” to connect the mark to the goods or services.

Suggestive Trademarks

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to suggestive trademarks. 

Suggestive trademarks are an important part of branding for many businesses. By choosing the right suggestive trademark and taking steps to protect it, you can ensure that your business has the exclusive right to use it. 

In this easy guide, we explain suggestive trademarks, give some tips on choosing the right suggestive trademark for your business, and show you how to protect your suggestive trademark.

We’ll also answer frequently asked questions about suggestive trademarks along the way.

Let’s get started!

CONTENTS

→ What a suggestive trademark is

→ Whether suggestive trademarks can be registered

→ Examples of suggestive trademarks

→ Advantages of suggestive trademarks

→ Common pitfalls of suggestive trademarks

→ How to pick a suggestive trademark

→ Ways to protect your suggestive trademark

→ The benefits of registering suggestive trademarks

→ Condensed Summary

1. Suggestive Trademarks

What is a Suggestive Trademark?

A suggestive trademark is a distinctive mark that alludes, implies, or hints at some quality of a product or service, but does not actually state or describe the product or service outright. Suggestive trademarks have some association to a product or service, but the association is not immediately clear because they do not say it outright. Consequently, customers must use their imagination to connect the mark with the product.

A suggestive trademark is a type of mark that suggests a characteristic or quality of a product, service, or business. Suggestive trademarks require thought and imagination to connect the mark to a product, service, or business. Suggestive trademarks never directly or immediately describe or communicate features, qualities, or aspects of a product, service, or business. As a result, people have to use thought and imagination to connect a suggestive trademark to a product, service, or business. 

Suggestive trademarks use terms or designs that hint or allude to specific qualities and/or features of the products or services they brand but do not state them outright. They are connected to the products and services they brand, but the connection is not immediately apparent.

What Makes a Suggestive Trademark Distinctive?

The test for whether a trademark is suggestive is:

Does the mark hint or allude to a quality, characteristic, or property of the product, service, or business that it brands so that thought or imagination is required to make the connection?

If the mark directly or immediately conveys a quality, characteristic, or property, it is not a suggestive trademark.

How Do Suggestive Trademarks Differ From Other Types of Trademarks?

Suggestive trademarks require imagination or a ‘mental step’ to link them to products and services. While suggestive trademarks allude or hint at aspects of  products or services, other types of trademarks are either wholly unrelated to the product or service (e.g., Apple®) or outright describe the product or service (e.g., British Airways®).

Can Suggestive Trademarks Be Registered?

Yes, suggestive marks can be registered. Suggestive marks are generally registrable, and the U.S. Patent and Trademark Office accepts and grants applications to register suggestive trademarks. The USPTO considers suggestive marks to be entitled to moderately strong legal protection because they are inherently distinctive.

Do suggestive trademarks need secondary meaning?

No, suggestive trademarks do not need secondary meaning because they are inherently distinctive, which means that they can be registered and protected without proof that customers identify with a certain company through use over time.  

Suggestive trademarks are considered distinctive enough to function as trademarks through proper use alone.

Suggestive marks are registrable without a showing of acquired distinctiveness, assuming all other conditions for registration are satisfied.

2. Examples of Suggestive Trademarks

Suggestive Trademark Examples

Suggestive trademarks hint at the nature of products or services without directly describing them and require some imagination to associate them with the underlying products or services. 

The following are examples of suggestive trademarks:

TRAVELODGE: is suggestive of hotel services because holiday alludes to times when travel is common  

RAIN-X: is suggestive of car wax because the name alludes to prohibiting rain spots

TESLA: is suggestive of electric vehicles because Nicholas Tesla was a renowned scientist in the field of electricity

NIKE: is suggestive for running shoes because Nike was the Roman god of athletics, which alludes to sports and sports gear.

WALMART: is suggestive for retail stores because the name implies a “mart”

THE NORTH FACE: suggests outdoor gear because the north face alludes to mountains, hiking and the like

Consumers who encounter these trademarks in the marketplace need to use their imagination to link them to products or services because the association is not immediately apparent.

The Ten Best Examples of Suggestive Trademarks

These are the ten best examples of suggestive trademarks:

1. RAIN DANCE: is suggestive for car wax because it implies that rain will dance of the finish

2. COPPERTONE: is suggestive for suntan lotion because the color copper brings to mind skin tanning in the sun.

3. CITIBANK: is suggestive for financial services because the terms “citi” and “bank” hint at banking services in cities.

4. NETFLIX: is suggestive of online streaming services because the terms “net” and “flix” imply the Internet and movies.

5. MICROSOFT: is suggestive for software and computers because the terms “micro” and “soft” hint at microchips and software

6. GREYHOUND: is suggestive of travel services because greyhounds are racing dogs, which suggests fast travel.

7. JAGUAR: is suggestive for automobiles because jaguars are exotic and swift, which alludes to exotic sports cars

8. AIRBUS: is suggestive of air travel because it conjures the image of a flying bus

9. KITCHENAID: is suggestive of kitchen appliances that help in the kitchen

10. PINTEREST: is suggestive of an image sharing service because the name alludes to “pinned images of interest”

Do you need help with your  trademark?

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The Advantages of Suggestive Trademarks

Suggestive names draw on the power of metaphor and analogy to create positive associations in customers’ minds. Many marketing professionals prefer them because they plant seeds in consumers’ minds as to the nature of branded products and services. So, they support efforts to promote brand identity.

There are some of the many benefits suggestive trademarks:

1. Suggestive trademarks are entitled to legal protection, which makes them easier to protect against infringement.

2. Suggestive trademarks are inherently distinctive and eligible for registration at the U.S. Patent and Trademark Office.

3. Suggestive trademarks are powerful marketing tools because they can allude to aspirational aspects of a brand identity.

4. Suggestive trademarks invite consumers to use their imagination to connect them to products and services, which strengthens brand identities

What are Some Common Pitfalls With Suggestive Trademarks?

There are a few common pitfalls that businesses make with suggestive trademarks. First, they may choose a trademark that is too similar to another one. This could lead to a likelihood of confusion and could invalidate their trademark. Second, they may not register their suggestive trademark with the U.S. Patent and Trademark Office. Without registration, they are not fully protecting their trademark.

3. Picking Suggestive Trademarks

How to Pick a Suggestive Trademark for Your Business

Picking the right suggestive trademark for your business is essential. There are a few key factors to consider when choosing a suggestive trademark. First, you want to make sure that the trademark is inherently distinctive. This means that it should not be descriptive of your product or service but should instead suggest something about it. Second, you want to ensure that the trademark is not too similar to another. This could result in a likelihood of confusion and could lead to your trademark being invalidated. Finally, you want to make sure that the trademark is capable of being registered with the U.S. Patent and Trademark Office. If it is not, you may be unable to protect it.

Hierarchy of Trademarks

The sole functions of a trademark are to identify the source of a product or a service and to distinguish them from the competition. A distinctive trademark performs this function. A distinctive trademark is strong.

It turns out that some marks have a natural tendency to be distinctive. Courts and the U.S. Patent and Trademark Office (USPTO) judge this tendency using the following hierarchy of trademarks:

Fanciful: (most distinctive) a term without a dictionary meaning that is invented for the sole purpose of branding a product or service. They are the strongest trademarks and are entitled to the most protection by courts and the USPTO.

Arbitrary: (highly distinctive) a term with a dictionary meaning that is not related to the product or service with which it is used. They are strong trademarks and entitled to broad protection by courts and the USPTO.

Suggestive: (distinctive) a term that alludes to something about the product or service with which it is used and requires some imagination, thought, or perception to make that connection. They are trademarks and are entitled to protection by courts and the USPTO.

Descriptive: (potentially distinctive) a term that directly conveys something about the product or service they brand. Descriptive marks are only entitled to protection if the owner can show that consumers recognize them as a brand after some period of exclusive use.

Generic: (never distinctive) the common name for a category of product – cannot be trademarked.

As a general rule, distinctive trademarks are preferable because they tend to be stronger and easier to register and protect.

What Are the Five Categories of Trademarks?

These five categories are:

    • Arbitrary trademarks
    • Fanciful trademarks
    • Suggestive trademarks
    • Descriptive trademarks
    • Generic trademarks

4. Protecting Suggestive Trademarks

Are Suggestive Marks Protected?

Yes, suggestive marks are protected. Federal courts have found that suggestive marks are entitled to protection under Trademark Law.

How to Make Sure Your Suggestive Trademark is Protected

There are a few steps that you can take to make sure that your suggestive trademark is protected. First, you should register it with the U.S. Patent and Trademark Office. This will give you the complete protection that you are entitled to under trademark law. Second, you should use your trademark in commerce. This will help put the public on notice of your trademark ownership. Finally, you should monitor for unauthorized use of your trademark. If you see someone using it without your permission, you can take steps to stop them.

Can you register a suggestive trademark?

Yes, you can register a suggestive trademark with the USPTO.

To be eligible for registration, a suggestive trademark must be distinctive, non-descriptive, and capable of identifying the source of the goods or services.

Register a suggestive trademark

Suggestive marks are generally registrable. They belong to the category of strong trademarks known as inherently distinctive marks. Assuming all other conditions for registration are satisfied, an inherently distinctive mark is registrable on the Principal Register without a showing of acquired distinctiveness.

The Benefits of Registering a Suggestive Trademark

There are several benefits to registering a suggestive trademark. First, it allows you to protect your trademark fully. Second, it gives you the exclusive right to use your trademark. This means that no one else can use it without your permission. Third, it will prevent a competitor from registering the trademark and taking it from you.  Fourth, it ensures that your trademark does not infringe anyone else’s trademark. Fifth, it puts the public on notice of your trademark ownership, which helps deter others from trying to use it.

Read about all of the advantages that come with federal trademark registration here.

Tips to Register a Suggestive Trademark

If you’re a small business owner who is looking to trademark your suggestive trademarks, you’ll need to make sure that consumers will be able to easily associate them with the underlying goods or services.

Here are four things to keep in mind when filing for a suggestive trademark:

1. Make sure the mark is suggestive, not descriptive.

2. Make sure there’s a separation between the mark and the goods or services it represents.

3. Don’t use any confusingly similar marks yourself.

4. Be prepared for a longer wait time than with other types of trademarks.

Do you need help with your trademark?

Talk to an Attorney Today

How Can a Business Make the Most of Its Suggestive Trademark?

 To make the most of a suggestive trademark, a business should consider registering it with the USPTO. Registering a suggestive trademark gives a business the exclusive right to use the mark in connection with its products or services. It also serves as notice to the public that the mark is owned by the business and helps to deter others from using it. Furthermore, registering a suggestive trademark can make it easier for businesses to enforce their rights if someone does attempt to use the mark without permission. Registering a suggestive trademark is important for businesses looking to protect this valuable asset.

They should also use the mark consistently and avoid using it in a way that might dilute its power.

With care and attention, a suggestive trademark can be an invaluable asset for any business.

5. Condensed Summary

Suggestive trademarks are marks that have some association with a product or service, but the connection is not immediately apparent. They require imagination, thought, or perception to connect the mark to the nature of the goods or services that the mark brands. There is no specific definition for what constitutes a suggestive mark. However, the mark is most likely suggestive when consumers need to use their imaginations to make a mental connection between a trademark and a product or service.

Ultimately, the US Patent and Trademark Office (USPTO) decides whether a particular trademark is suggestive. The USPTO uses various factors to make its determination, including how well-known the mark is and how much imagination is needed to make the relevant connection between trademark and product.

Suggestive trademarks can be registered with the USPTO. They are protectable under trademark law and are eligible for federal trademark registration.

The USPTO will not register trademarks that are simply descriptive of a product or service. However, suggestive trademarks, because they allude to features of a product or service, are considered inherently distinctive and thus registrable.

6. Frequently Asked Questions

1. Can you register a suggestive trademark?

Yes, you can register a suggestive trademark with the USPTO. To be eligible for registration, a suggestive trademark must be distinctive, non-descriptive, and capable of identifying the source of the goods or services.

Suggestive marks are generally registrable. They belong to the category of strong trademarks known as inherently distinctive marks. Assuming all other conditions for registration are satisfied, an inherently distinctive mark is registrable on the Principal Register without a showing of acquired distinctiveness.

2. Are suggestive marks protected?

Yes, suggestive marks are protected. Suggestive marks are generally registrable, and the U.S. Patent and Trademark Office accepts and grants applications to register suggestive trademarks. Also, federal courts have found that suggestive marks are entitled to moderately strong legal protection because they are inherently distinctive.

3. What are some examples of suggestive trademarks for products?

Suggestive trademarks require some imagination to associate them with the underlying products.  The following are examples of suggestive trademarks for products:

COPPERTONE: is suggestive for suntan lotion because the color copper conjures the color of skin tanning in the sun.

JAGUAR: is suggestive for automobiles because jaguars are exotic and swift, which alludes to exotic sports cars

MICROSOFT: is suggestive for software and computers because the terms “micro” and “soft” hint at microchips and software

4. Is Microsoft a suggestive trademark?

Yes, MICROSOFT is a suggestive trademark because it alludes to the company’s products and services without describing them. Micro implies small electronics and soft alludes to software.

5. What are some examples of suggestive trademarks for services?

Suggestive trademarks require some imagination to associate them with the underlying services.  The following are examples of suggestive trademarks for service:

CITIBANK: is suggestive of financial services because the terms “citi” and “bank” hint at banking services in cities.

GREYHOUND: is suggestive of travel services because greyhounds are fast, which suggests fast travel.

NETFLIX: is suggestive of online streaming services because the terms “net” and “flix” imply the Internet and movies.

6. Are Suggestive Trademarks Inherently Distinctive?

Yes, suggestive trademarks are considered inherently distinctive. This means that is not necessary to show that distinctiveness has been acquired.

TAKE THE NEXT STEP

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We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your trademark, we invite you to book a FREE brand protection strategy session with us here.

Simple Trademark Rules: AN EASY GUIDE

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If you want to keep your trademark, you need to know the trademark rules.

Ten Trademark Rules

By Michael Kondoudis, Small Business Trademark Attorney

This is our EASY guide to trademark rules.

A trademark is a sign that distinguishes your goods or services from those of other businesses. It can be a word, phrase, logo, or even distinctive packaging. Trademarks are essential to any business because they help consumers identify your company and products. As a business owner, it’s important to understand the rules surrounding trademarks so that you can protect your brand.

So, if you’re ready to learn how to use a trademark properly, this guide is for you.

Let’s get started!

Contents

> About Trademark Rules

> The First 10 Trademark Rules

> The Next 10 Trademark Rules

> Overview of Trademarks

> Frequently Asked Questions

1. About Trademark Rules

What Are Trademark Rules?

Trademarks are words, logos, and phrases that identify a product, service, or company. Trademark rules dictate how to use them. Trademark rules are the guidelines that dictate how trademarks can be used, registered, and protected.

Trademark rules ensure that businesses can identify their products and services to consumers. Trademark rules also prevent consumer confusion. Following trademark rules helps to protect consumers and the owners of registered trademarks.

Trademark rules come from federal and state governments and help ensure that trademarks are properly used to identify specific products and services.

What Happens if I Don’t Follow Trademark Rules?

You risk losing control over your brand if you don’t follow trademark rules. Others may be able to use your trademarks without your permission, leading to confusion among consumers. Additionally, you may be sued for trademark infringement. Infringement lawsuits can be very costly, and if you are found liable, you may be required to pay damages to the trademark’s rightful owner.

You Could Be Sued for Infringement

If you don’t follow the rules, you could be sued for infringement. This is when someone believes that their trademark rights have been violated. An infringement suit could force you to change your name or pay damages. It’s expensive and time-consuming, so it’s best to avoid it if you can. If you infringe a registered trademark, you could be ordered to pay damages, have your website shut down, and even be banned from using the infringing mark in the future.

You Could Lose Your Trademark Rights

If you don’t use your trademark correctly, you could lose your rights to it. You could also end up weakening your trademark. For example, if you allow others to use your mark without permission, they may be able to argue that it’s not yours anymore. This is called “genericide.” It happens when a brand name becomes so popular that it’s used as a generic term for the product or service, like Kleenex or Band-Aid.  In fact, there have been several high-profile cases of businesses losing their trademarks because they were used incorrectly.

You Could Be Forced to Stop Using Your Trademark Altogether

If someone challenges your trademark and wins, you could be forced to stop using it altogether. This is rare, but it does happen. So if you’re considering using someone else’s trademark, do your research first. Otherwise, you could end up on the receiving end of a cease and desist letter—or worse.

Why Are Trademark Rules Important?

Properly used trademarks keep their value and stay enforceable. Incorrectly used trademarks lose their value and can even result in the loss of all legal protection.

Consider the names escalator, cellophane, and aspirin. They were once Federally registered trademarks – now they’re not. What happened?

The short answer is that they were misused, stopped being distinctive, and became generic. Trademarks become generic when consumers stop seeing them not as a brand but as a type/category of product. When a mark becomes generic, it loses its protection under the law.

So, how did escalator, cellophane, and aspirin become generic? Their owners misused and/or permitted the misuse of these once valuable trademarks in their advertising. Many trademarks have been lost this way.

If you want to keep your hard-earned trademark rights, you need to follow the trademark rules.

2. The First 10 Trademark Rules

Ten Trademark Rules

1. Always use your whole mark

2. Make sure your mark stands out

3. Use a trademark symbol

4. Avoid descriptive words, terms, and phrases

5. Use your trademark as an adjective

6. Business and domain names do not protect trademarks

7. Avoid commonly used words, terms, and phrases

8. You can file a trademark before you start using it

9. Federal trademark registration is the best way to protect your mark

10. The ® symbol is reserved for registered trademarks only 

Bonus Rule: Working with a trademark lawyer increases your chances of registration by about 50%

If you follow these trademark rules, your trademark will keep its value and protect your brand.

1. Always Use Your Whole Mark

Use your complete trademark in its entirety and avoid any temptation to vary it. If your mark contains more than one linguistic or graphic component, use all of them. For example:

come see us at the TOY EMPORIUM

would be correct, while “see us at the Emporium” would be incorrect. Dissecting your trademark by using less than all of it and/or using variations of your mark both risk diminishing its distinctive quality in the minds of consumers.

Don’t experiment with variations of your trademark – especially logos!

2. Make Sure Your Marks Stand Out

Trademarks should always be used in ways that distinguish/set them off from surrounding text. This can be accomplished in any number of ways, including:

  • large type (BAND-AID bandages);
  • distinctive font/lettering (Disney); and
  • use of the word “brand” (Scotch brand transparent tape).

The use of the word “brand” after a mark is especially helpful to combat generic tendencies. Repeated reference to scotch tape as Scotch brand cellophane tape, for example, helps to remind consumers that “Scotch” is a brand name of a tape from a particular source.

Consistency is key

References to your mark must be consistent, i.e., the mark should be represented the same way each time. For example, if a mark is represented by a distinctive font, you should consistently use that same distinctive font when referencing that mark. This has the desired effect of emphasizing that the term is indeed a trademark, not merely another word in the text.

Set your mark off from surrounding text, and you’ll promote its distinctiveness.

3. Use a Trademark Symbol

A trademark symbol should follow each use of a trademark. At the very least, this notice should be used at least once in text and preferably with the trademark’s first or most prominent appearance.

Providing public notice of trademark rights is important for registered and unregistered marks alike.

For unregistered marks, it is proper to use TM or SM. The TM symbol identifies an unregistered trademark. The SM symbol identifies an unregistered service mark (a mark used in connection with a company’s services rather than goods). For example:

CRANAPPLETM cranberry apple drink

The symbol does not mean a trademark application has been filed or a registration has been issued. This means that the TM symbol may be used from the outset. Again, TM simply means that the term is claimed as a trademark.

Read our complete easy guide to trademark symbols here.

Do you need help with your trademark?

Talk to an Attorney Today

4. Avoid Descriptive Words, Terms, and Phrases

Many businesses mistakenly believe that names, logos, and phrases that describe their products are good choices for trademarks. This is not the case. Trademarks that convey a product’s or service’s characteristics, qualities, or purpose are considered weak marks. Weak marks are difficult to register with the U.S. Patent and Trademark Office and offer few protections.

Top reasons to avoid terms

  1. Difficult to register
  2. More expensive to register
  3. Not catchy or memorable/ Customers may not remember your brand
  4. Tougher to stand out
  5. Don’t communicate anything about your brand
  6. Weak trademarks

5. Use Your Trademark as an Adjective

Trademarks are adjectives. They should be used only as adjectives.

Adjectives explained

For the non-grammarians reading this guide, adjectives are words that modify nouns. Consider:

  • a “hot” day
  • a “wise” grandmother
  • a “red” car
  • a “powerful” drug

The words hot, wise, red, and powerful are adjectives that modify the nouns day, grandmother, car, and drug, respectively.

The simple trick to ensure the use of any trademark as an adjective

Unless you are a grammarian, the easiest way to guarantee that your mark is used as an adjective is to place the generic name of your product after your mark. Consider these examples:

  • a SCHWINN bicycle
  • STARBUCKS coffee
  • CHEERIOS cereal

The generic words bicycle, coffee, and cereal are nouns modified by the various trademarks.

Also, consistent reference to the generic term “teaches” consumers that your trademark is not the common name for a kind of goods from many different companies.

Don’t use your mark as a noun or verb.

7. Business and Domain Names Do Not Protect Trademarks

Trademarks are occasionally confused with registered business names and domain names. They are very different. Understanding the differences can save you time, money, and headache.

Registered business names vs. trademarks

A registered business name is just that… a name under which you do business. Registration is with a State agency and only authorizes you to use the name for business operations. That authorization is according to the statutes of the State.

Domain names vs. trademarks

A domain name is part of an address that identifies and locates computers on the Internet. For example, in the web address “http://www.uspto.gov,” the domain name is “uspto.gov.” Domain names are registered through non-governmental registrars. Technically, it is a possessory right to the address alone.

The most important right conferred by a trademark is exclusive use in marketing. That is what makes a trademark an effective identifier of the source of a product. Business names and domain names are essential, but they DO NOT confer any rights to use names, words, or logos.6

7. Avoid Commonly Used Words, Terms, and Phrases

Avoid using terms that are widely used in your industry. They are weak trademarks because consumers won’t recognize them as a brand. Also, common words can be hard to register with the U.S. Patent and Trademark Office

             Top reasons to avoid common terms

  1. May have to disclaim exclusive rights to them
  2. Weak trademarks
  3. Hard to enforce against infringers

8. You Can File a Trademark Application Before You Use It

The U.S. Patent and Trademark Office accepts trademark applications based on “intent” to use a trademark. This means you can start the trademarking process before selling products or services. You DO NOT need to wait. All that is required is that you have an actual intent and use the trademark for the products and services listed in the application.  

Remember: The sooner you start the trademarking process, the sooner you can legally own your trademark.

9. Federal Trademark Registration is the Best Way to Protect Your Mark

The United States trademark system protects trademarks at three levels – Federal, State, and common law. The differences between these levels of protection are significant.

Common law rights exist from the moment a trademark is used and do not require registration with any governmental agency. They are minimal because they.

  • extend only as far as the region where the trademark is actually used
  • do not extend to the Internet
  • are easily trumped by registered trademarks.

State trademark registration confers rights that extend throughout a single State. But, like common law rights, they are limited, especially since they are only to a State’s borders.

Federal trademark registration provides protection throughout the entire country and its territories and possessions. It confers nationwide rights and important legal presumptions like ownership and validity.

Federal registration is almost always best

10. The ® Trademark Symbol is Reserved for Registered Trademarks Only

If the trademark is registered, it is proper (and important) to use any one of these notices:

  • The letter R enclosed within a circle;
  • The phrase “Reg. U.S. Pat. & Tm. Off.”; and
  • Registered in U.S. Patent and Trademark Office.

Still, use with statutory notice is not mandatory. But, notice helps set off a trademark and gives notice that precludes an innocent infringer defense.

Remember – no one can reasonably feign ignorance of your mark when the ® symbol follows it!

A word of caution

A statutory notice should only be used after the USPTO issues your registration. Technically, intentional improper marking is a violation of Fe

Use your trademark with the correct symbol!

Working With a Trademark Attorney Increases Your Chances for Registration by about 50%

According to the Wall Street Journal, Federal trademark applications filed by a trademark attorney are 50% more likely to be approved than those filed by applicants on their own. Plus, you’ll be more likely to secure more protection and avoid overpaying the Official fees.

3. The Next 10 Trademark Rules

Ten More Trademark Rules

11. You can start using your trademark before you register it

12. You can register your trademark at the federal level

13. You can someone else’s trademark under certain circumstances

14. You need to use your trademark in commerce

15. Your trademark must be distinctive

16. Your trademark can’t be too similar to anyone else’s

17. There are many different types of trademark applications

18. Trademarks and copyrights are very different

19. Trademark registrations must be renewed every 10 years

20. There are five types of trademarks

If you follow these trademark rules, your trademark will keep its value and protect your brand.

11. You can start using your trademark before you register it

You can start using your trademark as soon as you start selling your goods or services. However, registering your trademark gives you additional legal protections. For example, if someone else tries to register a similar trademark, you may be able to prevent them from doing so. You can also sue for damages if someone uses your registered trademark without permission.

Do you need help with your trademark?

Talk to an Attorney Today

12. You can register your trademark at the federal level

The United States Patent and Trademark Office (USPTO) registers trademarks at the federal level. Federal registration offers significant legal protections. For example, you can sue for damages in federal court if you have a federally registered trademark.

To combat infringement, companies should consider registering their marks with the USPTO. The registration process provides certain legal benefits and puts would-be infringers on notice that the mark is already taken. Once registered, a company can enforce its rights in federal court where it may be entitled to collect damages for infringement.

 

13. The use of someone else’s trademark is allowed under certain circumstances

There are some circumstances under which you can use someone else’s trademark without their permission. This is called “fair use.” Fair use allows for the use of another company’s trademark for purposes such as criticism, commentary, news reporting, teaching, or research. If you’re not sure whether your intended use qualifies as fair use, you should consult with an attorney.

 

14. You need to use your trademark in commerce

In order to register a trademark, you need to be using it in connection with the sale of goods or services. Simply having a great name or logo isn’t enough—you need to put it to use in order to get trademark protection.

In order to be eligible for federal protection, a trademark must be used in interstate commerce—that is, it must be used in connection with goods or services that are sold across state lines. However, many states also protect trademarks that are used only within the state’s borders.

15. Your trademark must be distinctive

In order for a trademark to be registered, it must be distinctive enough to distinguish your goods or services from those of others in the marketplace. This means that generic terms (like “shoes” or “batteries”) can’t be registered as trademarks.

 

16. Your trademark can’t be too similar to anyone else’s

Obviously, you can’t have a trademark that’s identical to one that’s already taken. But even a slightly similar trademark can cause problems down the road. That’s why it’s so important to do your research before settling on a name or logo for your business.

 

17. There are many different types of trademark applications

There are many different types of trademark applications, but the two most common types are (1) use in commerce applications and (2) intent to use applications. Use in commerce applications are filed when the applicant is already using the mark in commerce on the products and/or services listed in the application. Intent to use applications are filed when the applicant has a bona fide intention to use the mark in commerce on the products and/or services listed in the application but has not yet begun using the mark.

 

18. Trademarks and copyrights are very different

The biggest difference between trademarks and copyrights is that copyrights protect original expression while trademarks protect words, phrases, symbols, or designs that identify and distinguish goods and services. Unlike copyrights, trademark rights can last indefinitely if the owner continues to use the mark.

Another key difference is that copyright infringement occurs when someone copies protected expression while trademark infringement occurs when someone uses a confusingly similar mark on competing goods or services. Because of this confusion, consumers may mistakenly believe that two separate companies or brands are connected when they are not. This can cause irreparable damage to a company’s reputation and goodwill.

19. Trademark registrations must be renewed every 10 years

Another important rule for maintaining a trademark registration is that the registration itself needs to be renewed every 10 years. This process is relatively simple and can be done online through the USPTO’s website. The only requirements are that the owner still intends to use the mark in commerce and that there have been no changes to the mark since it was last registered. If either of these conditions is not met, then the registration may be cancelled.

 

20. There are five types of trademarks

There are different types of trademarks which include word marks, figurative marks, color marks, sound marks, and smell marks.

Wordmarks: A wordmark is a type of trademark that consists of one or more words used to identify a product or service. The words can be in any language and can be presented in any font style as long as they are distinguishable from other words in the same language. Names, phrases, and slogans are word marks.

Figurative Marks: A figurative mark is a type of trademark that uses images or graphics to identify a product or service. This could include any image that represents the company such as their logo.

Color Marks: A color mark is a type of trademark that uses one or more colors to distinguish a product or service from others. The colors must be used in a particular way and must be shown in the application for registration with the USPTO.

Smell Marks: A smell mark is a type of trademark that uses a particular scent to identify a product or service from others. The scent must be distinctive and must be shown in the application for registration with the USPTO.

Sound Marks: A sound mark is a type of trademark that uses particular sounds to identify a product or service from others. The sound must be distinctive and must be shown in the application for registration with the USPTO. Jingles and tones are sound marks.

4. Overview of Trademark Law

Overview of Trademark Law

The main law that governs trademarks in the United States is the Lanham Act. If you use a name or logo for your business, you automatically have “common law” trademark rights. These rights are enforceable in state courts. Marks that are registered with the U.S. Patent and Trademark Office are given more protection than unregistered marks in federal courts.

Distinctiveness

A trademark must be distinctive in order to serve as a mark — that is, it must be able to identify the source of a specific product. The four categories established by U.S. courts for determining whether a mark is distinctive are: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, and (4) generic.

Four Categories

Different categories of trademarks have different levels of legal protection. The amount of protection a trademark gets depends on which category it falls in (i.e., how distinctive it is)

Arbitrary + Fanciful trademarks

An arbitrary or fanciful trademark is a mark that does not have a logical relationship to the underlying product or service. For example, the words “Exxon,” “Kodak,” and “Apple” do not have a relationship to their underlying products. Also, for example, Apple’s Apple Logo does not have a relationship to computers. Arbitrary or fanciful marks are easily recognized and inherently distinctive. These types of marks are highly protected by law.

Suggestive trademarks

A suggestive mark is a mark that evokes or alludes a feature of the underlying product or service but does not come out an describe it. For example, the word “Jaguar” is suggestive of a fast car but does not specifically describe it. Instead, some exercise of thought or imagination is needed to associate the word with the underlying product. Like arbitrary or fanciful marks, suggestive marks are given a high level of protection because they are inherently distinctive.

Descriptive trademarks

A descriptive mark is a mark that directly tells buyers something about a product or service (e.g., its color, function, or ingredients). For example, “Vision Center,” “British Airways,” and “Cartoon Network” each describe an aspect of the underlying product or service. Unlike arbitrary or suggestive marks, descriptive marks are not inherently distinctive and are protected only if they have “acquired distinctiveness,” which comes from years of exclusive use.

Generic trademarks

A generic mark is a mark that describes an entire category or type of product or service. For example. “Lawn Care,” “Milk,” and “Computer” are generic terms for entire categories of products or services. Generic marks are not protected under trademark law, and a business that sells products or services under these names would have no exclusive right to use that term.

5. Frequently Asked Questions

What are the top Trademark Rules?

These are the top 10 trademark rules:

1. Always use your whole mark

2. Make sure your mark stands out

3. Use a trademark symbol

4. Avoid descriptive words, terms, and phrases

5. Use your trademark as an adjective

6. Business and domain names do not protect trademarks

7. Avoid commonly used words, terms, and phrases

8. You can file a trademark before you start using it

9. Federal trademark registration is the best way to protect your mark

10. The ® symbol is reserved for registered trademarks only 

Bonus Rule: Working with a trademark lawyer increases your chances of registration by about 50%

If you follow these trademark rules, your trademark will keep its value and protect your brand.

TAKE THE NEXT STEP

Ready to Legally Own Your Trademark?

We have a simple, 5 step process we use to help our clients secure their trademarks. If you’re interested in protecting your trademark, we invite you to book a FREE brand protection strategy session with us here.

Trademark vs. Copyright: AN EASY GUIDE

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Trademarks are signals that identify and protect brands, while copyrights protect creative works from copying.

Trademarks vs Copyrights

By Michael Kondoudis, Small Business Trademark Attorney

This is our new EASY guide to trademarks, copyrights, and the differences between them.  So if you want to understand how to use trademarks and copyrights to protect your hard work, then this guide is for you.

Let’s get started!

Contents

PART I: Trademarks 

PART II: Copyrights

PART III: Trademark Vs. Copyright

PART IV: Trademark vs Copyright vs Patent

PART V: Frequently Asked Questions

PART I. TRADEMARKS

What Is a Trademark?

A trademark is a distinctive word, phrase, symbol, or other “signal” that represents your brand identity. They tell customers which products or services come from your business. A trademark distinguishes your products (or services) from the competition and helps stop imitations. Its main purpose is to provide protection for your brand, helping consumers recognize its origin effortlessly.

When you protect a trademark, you protect the brand that goes with it.

What Can Be a Trademark?

The most popular types of trademarks are names, logos, and slogans because they represent brands so well. However, almost anything that identifies and distinguishes a business’s products or services can be trademarked, including designs, sounds, characters, colors, and color schemes, so long as they are used to identify your brand. 

Worried About Your Trademark?

Talk to an Attorney Today

How Do You Protect a Trademark?

The best way to protect a trademark is to register it with the United States Patent and Trademark Office (USPTO). Federal trademark registration comes with the nationwide right to use your mark and prevents competitors from registering it for their brand. Trademark registrations are granted by the USPTO.

Pro Tip: After applying to the USPTO, you should consider using the trademark symbol “TM” with your mark.  It is not a requirement but is a good practice because it shows that you own the creative work and deters others from using it without permission. 

PART II. COPYRIGHTS

What Is a Copyright?

A copyright protects authors and creatives from the unauthorized copying of their creative and artistic works. Copyrights protect creative works like songs, books, photographs, movies, and performances.  A copyright gives you the exclusive right to use a work in a variety of ways: including:

  • Reproducing the work
  • Preparing derivative works based on the work
  • Performing the work publicly
  • Displaying the work publicly

Copyrights ensure that artists and creatives are rewarded for their artistry.

What Can Be Copyrighted?

Almost any artistic or creative work can be copyrighted.  They protect against unauthorized copying of creative works. Examples of artistic and creative works that can be copyrighted include:

  • Books, novels, and stories
  • Poems
  • Photographs and paintings
  • Movies and videos
  • Song lyrics and sheet music
  • Sound recordings

How Do You Protect a Copyright?

The best way to protect a copyright is to register it with the U.S. Copyright Office, which is part of the Library of Congress. Registration is optional but highly recommended because it comes with more legal protections. Copyright registrations are granted by the U.S. Copyright Office. 

Pro Tip: After applying to the Copyright Office, you should consider adding a copyright notice to your work.  It is not a requirement but is a good practice because it shows that you own the creative work and deters others from using it without permission. 

PART III. TRADEMARK vs. COPYRIGHT

Now that we know a bit about trademarks and copyrights, let’s look at the key differences between them.

Trademark vs Copyright: The Top Seven Differences 

1. Purpose: Trademarks are associated with brands and protect distinctive signs connected to goods or services (e.g., Nike’s Swoosh logo), while copyrights protect original creative works of authorship (e.g., books, music, films).

2. Scope of Protection: Trademarks shield against confusing similarities (not just identical marks), safeguarding customers from counterfeit products or services. In contrast, copyrights protect against unauthorized copying of their creative works.

3. Type of Protection: Copyrights give the owners the exclusive right to reproduce, distribute, and display their works, while trademarks only give their owners exclusive rights to use the marks mark in connection with their products or services.

4. Duration: Copyrights expire 70 years after an author’s death, by statute. Unlike copyrights,  trademarks can potentially last indefinitely, provided you continue to use and renew them. So, while copyrights definitely expire, trademarks do not.

5. Symbols: Trademarks are designated by the symbol “TM” or, in the case of registered trademarks, “®”. Copyrights are designated by the symbol “©”.

6. Use: Trademarks must be used in commerce, copyrighted works do not need to be used in commerce

7. Registration: Trademarks are registered with the U.S. Patent and Trademark Office (USPTO). You can obtain federal trademark registration through the USPTO. Copyrights are registered with the U.S. Copyright Office, which is a part of the Library of Congress. You can obtain federal copyright registration through the U.S. Copyright Office of the Library of Congress.

Remember: The main difference between trademarks and copyrights is that trademarks protect distinctive signs associated with goods or services (ex: Nike’s Swoosh logo), while copyrights protect original works of authorship (ex: books, music, films).

PART IV. TRADEMARKS vs. COPYRIGHTS vs. PATENTS

Patents, copyrights, and trademarks are different types of intellectual property. Each one offers different protections for different types of intangible properties (i.e., brands, creative works, and inventions). The distinctions among the three can be subtle, and often the same product or service may involve more than one of these intellectual property or “IP” rights.

The key to understanding the differences between trademarks, copyrights, and patents is in what they protect.

Trademarks protect brands.

Trademarks distinguish a company’s products from the competition and help customers find and rely on brands they know and trust.

Names, logos, colors, and even sounds can all be trademarks – if they are used to distinguish products.

Federal trademarks, the most common and most valuable type, are granted by the U.S. Patent and Trademark Office. They continue indefinitely so long as they are renewed.

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Copyrights protect creative works.

Copyrights ensure that artists and creatives are rewarded for their artistry.

Novels, movies, poetry, photographs, songs, and even computer software can be protected by copyrights.

Copyright protects the form of expression (e.g., words) rather than the mode of expression (i.e., paper).

Copyrights are administered by the Copyright Office of the Library of Congress.

Patents protect inventions.

Patents help encourage inventors to keep inventing.

Patentable works include “new” and “useful” machines, industrial processes, chemical compositions, and even some plants. There are two main types of patents:

(1) Utility patents for how something works (e.g., machines, articles of manufacture, or compositions of matter);

(2) Design patents for how something looks (ornamental features).

Patents are granted exclusively by the U.S. Patent and Trademark Office in exchange for public disclosure of the invention in the patent document.

PART V. FREQUENTLY ASKED QUESTIONS

1. Do you trademark or copyright a logo?

You trademark a logo.  Logos are trademarked.  You protect a logo by trademarking it. With a logo trademark, you can prevent competitors from using your logo in connection with their products or services. Logos are not copyrighted.

If you have a logo, and you want to protect it, then you need a trademark.  Famous examples of trademarked logos are the McDonald’s “Golden Arches” and the Nike “Swoosh.”

When a logo is trademarked, competitors will not be permitted to offer products or services under the same logo or anything similar.

Logo = trademark

2. Do you trademark or copyright a name?

You trademark a name.  Names are trademarked.  You protect a brand name by trademarking it. With a name trademark, you can prevent competitors from using your name in connection with their products or services. Names are not copyrighted.

If you have a product and want to protect the name, you would need a trademark.  Famous examples of name trademarks include IPHONE® and BIG MAC®.   

When a name is trademarked, competitors will not be permitted to offer products or services under the same name or anything similar.

Name = trademark

3. Do you trademark or copyright a business name?

You trademark a business name.  Business names are trademarked.  You protect the name of a business by trademarking it. With a name trademark, you can prevent competitors from using your business name in connection with their products or services. Business names are not copyrighted.

If you have a business and want to protect its name, you would need a trademark.  Famous examples of trademarks for business names include GOOGLE®, APPLE®, and COKE®.

When a business name is trademarked, competitors will not be permitted to offer products or services under the same name or anything similar.

Business name = trademark

4. Do you trademark or copyright a phrase?

You trademark a phrase.  Phrases are trademarked.  You protect a phrase by trademarking it. With a trademark, you can prevent competitors from using your phrase in connection with their products or services. Phrases are not copyrighted.

If you have a service and want to protect a phrase that you use to brand it, you would need a trademark.  Famous examples of trademarks for phrases include DON’T LEAVE HOME WITHOUT IT® and WHAT’S IN YOUR WALLET?®.

When a phrase is trademarked, competitors will not be permitted to offer products or services under the same phrase or anything similar.

Phrase = trademark

5. Do you trademark or copyright a slogan?

You trademark a slogan.  Slogans are trademarked.  You protect the slogan of a business by trademarking it. With a trademark, you can prevent competitors from using your slogan in connection with their products or services. Slogans are not copyrighted.

Well-known examples of slogans for businesses include and Apple’s THINK DIFFERENT® and McDonald’s I’M LOVIN’ IT®.

When a slogan is trademarked, competitors will not be permitted to offer products or services under the same slogan or anything similar.

Slogan = trademark

 

6. What Goes Into a Copyright Notice?

A copyright notice includes the following three items:

  • The copyright symbol © or the word “copyright”
  • The name of the copyright owner
  • The year of publication

 

7. Do you trademark or copyright a stage name?

You trademark a stage name.  Stage names are trademarked.  You protect a stage name by trademarking it. With a stage name trademark, you can prevent competitors from using your stage. Stage names are not copyrighted.

If you have a stage name that you want to protect, you would need a trademark. Famous examples of trademarks for stage names include LADY GAGA, DRAKE, SPIKE LEE.

Stage name = trademark

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What Can Be Trademarked: An EASY Guide

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What Can Be Trademarked

By Michael Kondoudis, Small Business Trademark Attorney

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This is our EASY guide to what can be trademarked.  If you want to know what can be trademarked (and what can’t), then this guide is for you. 

Let’s get started!

Contents

> What is a trademark?

> What is a registered trademark?

> What a trademark does

> What can be trademarked

> The top 15 things that can be trademarked

> What cannot be trademarked

> The top 7 things that cannot be trademarked

> What is a trademark?

> What is a registered trademark?

> What a trademark does

> What can be trademarked

> The top 15 things that can be trademarked

> What cannot be trademarked

> The top 7 things that cannot be trademarked

What Is A Trademark?

A trademark is a sign or signal that represents a brand identity and identifies a business’s products or services in the marketplace. Names, logos, and phrases are the most popular trademarks.

Trademarks represent brands. Every successful brand is built on at least one trademark. When you protect a trademark, you protect the brand that goes with it, along with all of the hard work and investment that you put into your brand. In most cases, names and logos are the cornerstones of brands.

What Is A Registered Trademark?

A registered trademark is an enhanced trademark certified by the U.S. government. It’s an enhanced trademark because it comes with exclusivity and nationwide legal rights and prevents anyone else from registering anything even similar for your industry. 

Registered trademarks are sometimes referred to as federal trademarks.

Federal trademark registration is the best way to protect the mark(s) that reflect your brand. Read our quick guide to all of the reasons to register a trademark.

U.S. Trademark 48,461 for Campbell’s Soup

Campbells Trademark Registration No. 48461

U.S. Trademark 977,190 for the NIKE Logo

Nike SWOOSH Logo

The United States Patent and Trademark Office (or “USPTO”) is the Federal agency that registers trademarks.

What Does A Trademark Do?

Trademarks represent brands. A trademark tells customers which products or services come from your business. So, trademarks help customers identify your business as the source of a product or service. A trademark individualizes a product or service and differentiates it from the competition.

• Trademarks help customers find the products and services that they like, which helps make them repeat customers.

• Trademarks also help customers recommend products and services to their friends, which is free marketing.

• Trademarks convey stability and trust and tap the human preference for visuals, which makes your marketing more effective and less expensive.

The purpose of a trademark is to allow customers to easily identify the source of goods or services. Trademarks protect businesses’ investments in their brands and stop others from unfairly reaping the benefits of that investment.

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What Can Be Trademarked?

Many things can be trademarked, especially business or product names, logos, slogans, and phrases. As long as the trademark identifies a source of goods or services and is used in commerce, it is generally eligible for trademark protection. Generally, trademarks cover goods and services that are related to the brand. Typically, trademarks are registered with the U.S. Patent and Trademark Office.

The most popular types of marks are:

Names: Usually, your company name or the name of your product.

Logos: Your company logo or other graphic used to brand your products

Phrases + slogans: The phrase you use to sell your products.

For example, Apple Inc. protects its brand with a combination of its name “Apple,” its apple logo, the slogan “Think Different,” and product names like “MacBook” and “iPhone.”

Almost anything that identifies and distinguishes a business’s products or services can be trademarked, including a word, name, phrase, symbol, design, sound, character, color, or color scheme, so long as it is used as a brand. Every element of your brand can be a trademark. The possibilities are almost limitless.

What Can You Trademark?

Anything that represents your brand and distinguishes your products from the competition can be trademarked, especially business or product names, logos, slogans, and phrases. So, you can trademark anything that distinguishes your products and services from the competition and helps consumers identify brands, including: 

    1. Band Names (“The Beatles”)
    2. Blog Names  (“Mashable”)
    3. Catchphrases (“That’s Hot!”)
    4. Characters/Mascots (“Ronald McDonald”)
    5. Company Names (“Google”)
    6. Logos (the Nike “swoosh”)
    7. Podcast Names (“The Joe Rogan Experience”)
    8. Product Names (“Corvette”)
    9. Product Shapes (Coca-Cola contoured bottles)
    10. Restaurant Names (“Taco Bell”)
    11. Services (“Bank America”)
    12. Slogans (“What’s in your wallet”)
    13. Webinar Names + Platforms (“Zoho”)
    14. YouTube Channel Names (“PewDiePie”)

What Can You Trademark?

Anything that represents your brand and distinguishes your products from the competition can be trademarked, especially business or product names, logos, slogans, and phrases. So, you can trademark anything that distinguishes your products and services from the competition and helps consumers identify brands, including: 

  1. Band Names (“The Beatles”)
  2. Blog Names  (“Mashable”)
  3. Catchphrases (“That’s Hot!”)
  4. Characters/Mascots (“Ronald McDonald”)
  5. Company Names (“Google”)
  6. Logos (the Nike “swoosh”)
  7. Podcast Names (“The Joe Rogan Experience”)
  8. Product Names (“Corvette”)
  9. Product Shapes (Coca-Cola contoured bottles)
  10. Restaurant Names (“Taco Bell”)
  11. Services (“Bank America”)
  12. Slogans (“What’s in your wallet”)
  13. Webinar Names + Platforms (“Zoho”)
  14. YouTube Channel Names (“PewDiePie”)

What Cannot Be Trademarked?

Inventions and creative works of art cannot be trademarked; they are protected by patents and copyrights, respectively. Also, some brand elements cannot be trademarked because they do not identify the source of a product or service.

• Names and logos that are too similar to an existing trademark cannot be trademarked. Confusion could result.

• Generic terms and phrases cannot be trademarked because they are never recognized as a brand.

• Common surnames cannot be trademarked without a separate showing that the name has acquired distinctiveness through use.

• Geographic descriptors cannot be trademarked because they just describe an aspect of a product or service.

Other examples of things that you cannot trademark are inventions and creative works, which are respectively protected by patents and copyrights. 

 

1. Generic terms

Generic terms that describe a category of product or service cannot be trademarked. For example, you cannot trademark the word “car” or the word “computer.”

2. Descriptive terms

Descriptive terms that describe a feature of a product or service cannot be trademarked. For example, you cannot trademark the word “fast” or the word “efficient.”

3. Geographical terms

Geographical terms that identify the original or location of a product or service cannot be trademarked. For example, you cannot trademark the word “California” or the word “New York.”

4. Personal names

Personal names cannot be trademarked. For example, you cannot trademark the name “John Smith” or the name “Mary Jones.”

5. Trademarks that are misleading

Trademarks that are misleading cannot be registered. For example, you cannot register a trademark for the word “Natural” if the product is not actually natural.

6. Trademarks that are too similar to existing trademarks

Any mark that is likely to cause confusion with an existing registered mark is not registrable.

What Cannot Be Trademarked?

Inventions and creative works of art cannot be trademarked; they are protected by patents and copyrights, respectively. Also, some brand elements cannot be trademarked because they do not identify the source of a product or service.

• Names and logos that are too similar to an existing trademark cannot be trademarked. Confusion could result.

• Generic terms and phrases cannot be trademarked because they are never recognized as a brand.

• Common surnames cannot be trademarked without a separate showing that the name has acquired distinctiveness through use.

• Geographic descriptors cannot be trademarked because they just describe an aspect of a product or service.

Other examples of things that you cannot trademark are inventions and creative works, which are respectively protected by patents and copyrights. 

 

1. Generic terms

Generic terms that describe a category of product or service cannot be trademarked. For example, you cannot trademark the word “car” or the word “computer.”

2. Descriptive terms

Descriptive terms that describe a feature of a product or service cannot be trademarked. For example, you cannot trademark the word “fast” or the word “efficient.”

3. Geographical terms

Geographical terms that identify the original or location of a product or service cannot be trademarked. For example, you cannot trademark the word “California” or the word “New York.”

4. Personal names

Personal names cannot be trademarked. For example, you cannot trademark the name “John Smith” or the name “Mary Jones.”

5. Trademarks that are misleading

Trademarks that are misleading cannot be registered. For example, you cannot register a trademark for the word “Natural” if the product is not actually natural.

6. Trademarks that are too similar to existing trademarks

Any mark that is likely to cause confusion with an existing registered mark is not registrable.

What Cannot Be Trademarked

The United States Patent and Trademark Office (USPTO), which is responsible for examining applications and granting registrations for trademarks, has strict rules about what can and cannot receive protection. The following things cannot be registered as trademarks:

  1. Deceptive Words, Names, Phrases, Slogans (they are misleading)
  2. Merely Descriptive Words (e.g., Best ice cream, Red car)
  3. Merely Decorative Features (they don’t identify source)
  4. Generic Terms and Phrases (e.g., milk, toaster)
  5. Proper Names or Likenesses (without consent from the person)
  6. Disparaging Words, Names, Phrases (by law)
  7. Government Flags, Coats of Arms, Flags (by Statute)

Frequently Asked Questions

 

1. What can I trademark?

You can trademark anything that helps customers recognize you in the marketplace and distinguish you from your competitors. Company names, product names, logos, and phrases are prime candidates for trademark protection.  You can trademark words, phrases, and logos by submitting an application to the U.S. Patent and Trademark Office (USPTO).

 

2. What cannot be trademarks?

Creative works and inventions are not eligible for trademark protection. They are protected by copyrights and patents, respectively. Also, merely descriptive terms such as “shoes” or “books” and generic terms such as “car wash” or “dry cleaning” cannot be trademarks because they do not distinguish a company or its products in the marketplace.

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