When you are designing a new product, you may be able to trademark a portion of the invention if it meets certain criteria.
What qualities does a trademark have?
Thanks to several legal battles, the courts have determined how distinctive a mark must be in order to be specifically associated with a product. The four categories the courts have used to decide if there is a link between the trademark and the product are as follows:
- The mark is arbitrary or fanciful – Apple and Exxon are considered arbitrary or fanciful marks. While the consumer can readily identify the underlying product, the mark has no direct correlation to the product. Nike has several trademarks that are considered fanciful, including the famous Swoosh design.
- The mark is suggestive – Greyhound (dog) and Jaguar (jaguar) symbols are examples of suggestive trademarks. The best way to understand this type of trademark is to understand the trademark itself may not describe the actual product. Instead, the requirement for intellectual property protection is the consumer must recognize the symbol. In these cases, the consumer must use some imagination in order to associate the name with the product the company produces. These symbols have, over time, come to represent a degree of quality associated with the products, such as Jaguar cars, or services, in the case of Greyhound, of the company.
- The mark is descriptive – Sharp (for televisions) is an example of a descriptive mark. These trademarks are the most difficult to obtain simply because they generally are used to describe a feature of the underlying product. However, there are some big names that have descriptive marks like Sharp, Holiday Inn and All Bran (made by Kellogg’s) have been trademarked. These brands are able to be trademarked because the name has become associated with the product.
- The mark is generic – Generic wording is typically impossible to trademark. In fact, some of the words you may be familiar with have lost their trademark simply because of their generic nature. Examples are escalator, cellophane and aspirin. The Bayer and Scotch brands are trademarked but generics (aspirin and tape) no longer are. The “F” commonly associated with Facebook is an example of a generic mark that cannot be trademarked as is the “T” associated with Twitter.
Registering and using a trademark
A mark may be registered with the U.S. Patent and Trademark Office (PTO) or may be used when you are selling a specific product. This process can be frustrating and confusing because of the rules that apply to trademarks. For example, registering with the PTO allows you to use a trademark nationwide with a caveat – if another entity is using the mark within a certain geographical boundary, they may be entitled to continue using it. This would not be considered a violation of intellectual property rights.
It is important to discuss when it is appropriate to file the documentation necessary for protection after you start using a specific mark for your products. Remember, descriptive trademarks can be protected once they are associated with the company/person producing the product rather than being associated with the product. This is the manner that Holiday Inn used to trademark their name.
Use of a consistent trademark allows a consumer to identify your product directly with your company, and the use of the symbol ® with the trademark shows that the name is registered with the PTO. Primarily, trademark registration is used to ensure that no other company or entity is using your intellectual property in a manner that could be considered misleading to the public.
If you believe your product name is eligible for trademark registration, you may need the help of an intellectual property attorney to guide you through the process. Contact Enventys Partners and let us help you find an intellectual property attorney, assist with product research and develop a marketing strategy.
Note: This page is intended to provide legal information. It is not legal advice and should not be taken as such. If you have specific questions about a legal matter, please contact your attorney.
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