How trademarks are different from other kinds of intellectual property
posted by Lila A. T. Akrad on Wednesday, December 5, 2018 in SHAZAM Blog
The term “trademark” is often used to refer to various types of marks, including trademarks (for goods) and service marks (for services), as well as collective marks and certification marks. A trademark is any word, phrase, symbol, design, color, sound, scent, or any combination thereof, adopted and used by a business to identify its goods or services and to distinguish them from those manufactured, provided, or sold by others. Trademark law also protects trade dress (the overall “look” of a product or service, such as the distinctive fluted bottle used by the Coca-Cola® Company to package Coke®).
Trademarks are branding that everyone encounters on a daily basis. Purchasing decisions are constantly influenced by trademarks and are an essential part of a business. Trademarks capture the consumer’s attention and distinguish one’s products and services from those of competitors. They also indicate a consistent level of quality in products and services while also preventing confusion to the consumer as to the source of goods or services further enabling the trademarks to be an effective weapon against unfair competition. Trademarks are a distinct and unique asset for a business or entrepreneur.
Choosing a trademark
So how does one choose a good trademark? When choosing a trademark, consider the following:
- Is the chosen mark capable of trademark protection?
- How strong is the selected mark?
The types of trademarks for products include five main categories:
Describe what the product/service is or does
Highlight or “suggest” a form, function or feature of the product or service
Might include a term or phrase with a well-known meaning, but the meaning in its case is different
A term, name or logo that is different from anything else that exists
motor fuels, oils
There is also a “Generic Mark” which doesn't qualify for a trademark unless it includes more specific detail. One example of a generic mark is Thermos, which was originally a Thermos GmbH trademark name for a vacuum flask; but declared generic in the U.S. in 1963.
Registering a trademark
Registration of a trademark with the United States Patent and Trademark Office (USPTO) provides a number of benefits, including:
- it grants the right to use the registered trademark symbol: ®
- it grants the right to file a trademark infringement lawsuit in federal court and obtain monetary remedies, including infringer’s profits, damages, costs, and, in some cases, treble damages and attorneys’ fees
- it acts as a bar to the registration of another confusingly similar mark, and
- it may serve as the basis for an international trademark application.
After a mark is registered, the owner must protect the mark by properly using the mark and by monitoring use of the same or confusingly similar marks by others. To maintain the federal registration, the owner must periodically pay maintenance fees and file declarations of continued use and renewal applications.
Protect your trademark
It is important to distinguish your products and services from other businesses, and to make sure that no one else is using your trademark to promote their business. The quality of the trademark registration is crucial, so it’s important you contact a competent intellectual property (IP) attorney to work on your behalf.
About the Author
As corporate attorney and IP counsel, Lila Akrad develops, negotiates and manages contracts and other legal documents for SHAZAM. In her role, she consults on legislative and regulatory issues, corporate governance matters and leads intellectual property business strategies including copyright, t
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