What Is a Trademark?

By: Joe Carnicella, intellectual property attorney with Picadio Sneath Miller & Norton, P.C. ()

As part of our “What is . . . ?” series, it’s time to find out just what is a trademark / service mark.

PSMN What Is...? SeriesA trademark / service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the goods or services from those manufactured or sold by others and to indicate the source of goods or services, even if that source is unknown.  There are five categories of marks: fanciful, arbitrary, suggestive, descriptive and generic.  A fanciful mark comprises a term that has been invented for the sole purpose of functioning as a trademark or service mark.  These words are either unknown in the language or are completely out of common usage.  Examples of fanciful marks include PEPSI and KODAK.  An arbitrary mark comprises words that are common in language but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services.  An example of an arbitrary mark is APPLE for computers.  A suggestive mark comprises words that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services.  A descriptive mark comprises words that merely describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.  Finally, a generic mark comprises words that the relevant purchasing public understands primarily as the common or class name for the goods or services.

Now that you have an understanding of what is a trademark / service mark, the next step is to determine whether you can and should obtain a mark.  An important issue to determine is whether a mark is registrable.  One of the most common grounds for refusal of a registration is that the potential mark causes a likelihood of confusion with an existing mark.  In particular, a likelihood of confusion exists when the marks are similar and the goods or services relate in a way that such consumers would mistakenly believe they come from the same source.  Other grounds for refusal exist as well.  The other important issue to determine is whether the mark is enforceable based on the strength of the mark.  The strongest mark, and thus, the easiest to enforce, is a fanciful mark, and next in line would be an arbitrary mark followed by a suggestive mark.

If you are interested in obtaining a trademark / service mark, you should consult a trademark attorney to advise and to assist you with the federal registration process.      

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