Trademarks and Service Marks
Protecting commercially valuable trademarks
Trademarks identify the source of a product. World famous trademarks include Nike® for shoes and Coca-Cola® for beverages. Service marks identify the source of a service provider. World famous service marks include FedEx® for delivery services and Wells Fargo® for financial services. Trademarks and service marks can be a slogan, like Just Do It® for Nike® shoes, a color, like brown for UPS® delivery services, a sound like the NBC® chimes, or a symbol, like the Rolex Crown® for watches. Trademark lawyer Larry Evans can help you propose your trademark.
- Fanciful marks consist of words that have been made up or coined solely for the purpose of functioning as a trademark or service mark. Examples are STARBUCKS® retail coffee stores, CLOROX® bleach, VERIZON® cell phone services, and REEBOK® shoes.
- Arbitrary marks are words, symbols, or pictures in common use that, when used in connection with the services or goods, neither describe nor suggest any quality, ingredient, or characteristic of those goods or services. For example, APPLE® computers, IVORY® soap, AMAZON® on-line retail store services, and GODIVA® chocolate.
- Suggestive marks suggest, rather than describe, some characteristic of the goods to which they are applied and require the consumer to exercise their imagination to reach a conclusion as to the nature of the product or service. For example, COPPERTONE® suntan oil, ACCENT® seasoning, and ROACH MOTEL® insect control products.
- Descriptive marks identify a quality or characteristic of a service or product, for example, color, dimension, function, odor, or ingredients. For example, CHAPSTICK® ointment, REALEMON® reconstituted lemon juice, INSTANT BREAKFAST® powered breakfast drink, and BUFFERIN® buffered aspirin. Descriptive marks are usually registered after five years of continuous and exclusive use because they are assumed to have acquired secondary meaning.
- Generic marks can never be trademarks or service marks. For example, aspirin, milk, coffee, cola, jeans, car, electricity, thermos, and shredded wheat.
How does a trademark get registered?
To register a trademark, Larry Evans—
- Performs a trademark search
- Prepares the application to register the client’s trademark
- Files the application with the U.S. Patent and Trademark Office
- Replies to an Office Action, if necessary
A trademark examiner reviews the client’s application and decides whether to approve or reject the trademark application. Sometimes, a document called an Office Action is sent to the client. The client then has six months to reply to an Office Action.
If the proposed trademark is allowed, then it is published in the Official Gazette of the U.S. Patent and Trademark Office. This tells other potential trademark owners that registration for the client’s trademark will soon take place, and it gives them one month to oppose it. If there is no opposition, the trademark is registered. A registered trademark gives official notice that the client owns the right to use that mark on the goods listed. The symbol for a registered trademark is ®, which can only be used after the trademark is registered. Prior to that time, the client may only use the symbols ™ for a trademark and SM for a service mark.
Before printing labels or advertising a new product, many companies conduct a trademark search as a defensive measure to make sure another company does not own the same or a similar trademark. A good site to look for trademarks is www.uspto.gov. The fact that a mark does not show up on a Google® search, does not mean the mark is clear. Call Larry Evans at 314-303-1193 for a trademark clearance search.