Trademarks for the Troops

A hearty THANK YOU from all of us at TradeMark Express to our troops.

Since it's Veteran's Day, I thought it'd be nifty to take a look at filed trademarks that are about the vets.

Hope for Veterans is owned by Community Hope and "is a transitional housing program...to provide a safe, supportive environment wherein former servicemen and women can start rebuilding their lives." Find out more about them here.

Recruit Veterans "is a service-disabled veteran owned and operated staffing and recruiting firm." Read more about them here.

Thank a Vet is a pending trademark for a clothing line. Buy the clothes here.

Trademarkia

Launched in September of this year, Trademarkia is a free, incredibly easy to use search engine that allows users to search the USPTO database of Federal trademarks, be they live or dead.

Two of my favorite features:

* Logo Themes: The USPTO does offer the capability to search logos on their site but it's a bit cumbersome. Here's an article about how one can do so. But Trademarkia's interface is much easier & really, it's just neat to browse through logos.

* Trademark Categories: aka Goods/Services Each classification is accounted for here & each has it's own snazzy design leading you into the International Classification. Once you're in a class, you can then look at Federal trademarks alphabetically.

Now it should be said that while Trademarkia is super snazzy, very easy to use & just overall cool looking -- this is a search of the Federal trademarks ONLY, meaning we're missing State trademarks & Common-Law databases.

Also another thing I noticed is in conducting my SAM test, the engine seems to work pretty similar to the USPTO, which means the user will need to be sure to check all possible variations of the mark when conducting this preliminary search.

SAM Test

USPTO Flaw #1, Sound: Trademarkia, like the USPTO, brings up 3 marks for IShine but not Ice Shine.
USPTO Flaw #2, Appearance: Again, same results as the USPTO - Trucool but not Turcool
USPTO Flaw #3, Meaning: This one was a bit odd as Trademarkia resulted in only 1 hit whereas the USPTO comes up with 23. Not sure what happened there.

Even given the above, I still strongly recommend folks use Trademarkia as a preliminary clearance Federal trademark search engine. It's far & above easier to use than the USPTO. Then once your mark clears that preliminary step, you can move on to the comprehensive part of the trademark process.

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Distinctiveness & Descriptiveness Continuum

Here's a visual snapshot of the USPTO's Distinctiveness & Descriptiveness Continuum. Click to view a larger version. I hope it makes the PTO's guidelines a little clearer plus I like charts, graphs & whatnot :)

So far I've written about merely descriptive marks so I'll be sure to hit the other sections & re-post this visual with links to each new post.

Descriptive Trademarks

The title here is a bit misleading as descriptive words are not typically allowed to be registered on the USPTO’s trademark Principal Register. Let’s back up a little...

One of the main points (some would argue THE main point) of having a Federal trademark is to have exclusive rights to a name, a logo or a slogan within your industry. Given that, words that “merely describe” the goods or services are not going to be allowed.

There are two main reasons the USPTO provides:

1) “to prevent the owner of a mark from inhibiting competition in the sale of particular goods”

What this means: The owner of the descriptive word(s) can’t trademark it as it could create a stranglehold, of sorts, on the word(s) within the industry. For instance, the word “trademark” is disclaimed on our Federal trademark registration on TradeMark Express, meaning we’re not claiming exclusive rights to the word “trademark” as it’s a descriptive word for our industry.

2) “to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products”

What this means: People should have the freedom to use descriptive words in advertising or in describing their goods/services. Using the example above, other companies offering trademark services should be able to use the word “trademark” to describe their services, in their advertising, etc.

So How do I Know if my Name is Descriptive?

As with anything trademark, it’s never black & white. Each situation is going to vary from the next. The basic litmus test is “does this word describe the product and/or service?” and if the answer is yes, then you’ve most likely got a descriptive name on your hands.

It is not necessary that a term describe all of the purposes, functions, characteristics, or features of a product/service to be considered merely descriptive; it is enough if the term describes one significant function, attribute, or property.

Here are some examples provided by the USPTO:

• APPLE PIE held merely descriptive of potpourri (most likely because the words describe the scent)
• BED & BREAKFAST REGISTRY held merely descriptive of lodging reservations services
• MALE-P.A.P. TEST held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer

If you’d like help determining if your name is descriptive, please leave a comment or email me at dc@tmexpress.com

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Brainstorming Tips for Creating a Business Name

Here's a few things to keep in mind:

1) Keep your industry, your clients/customers, your advertising plan in mind.

2) The more unique & distinctive a name, the higher the chances that the name is legally available for use. And the higher the chances of obtaining the trademark.

3) Think of your business as having a personality. What kind of image do you want your business to portray?

Specific brainstorming tips:

Think about what you want but more importantly, think about what you DON'T want. If you don't want a 3-word name, don't bother with those. If you don't want non-English words, don't bother with those & so on and so forth.

What are the "types" of names you like? Think about words in their simple forms, e.g. adjectives, Latin roots, mythological names, etc. Compile a listing of the types & then seek out resources, such as books or sites, which specialize in those types.

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Free Preliminary Trademark Search

TradeMark Express implemented a new service recently - ONE free preliminary USPTO search completed over the phone with you. We always conduct a preliminary USPTO search before we start comprehensive search but this new feature does NOT require that an order be placed first.

If you'd like your ONE free preliminary USPTO trademark search, contact me: shannon@tmexpress.com; Contact Page; 800.340.2010

Twitmark Express

TradeMark Express has joined the twitter party finally. I've been toying around with the idea for awhile and finally got around to it.

Follow me at TradeMarkExpres

Tweet you later!

Trademark International Class: Class 36 (Insurance and Financial Services)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 36.

What is International Class 36 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 36's short title is insurance and financial services. The USPTO has 724 accepted descriptions that fit into IC 36; check them out here.

Almost anything you can think of that’s in the insurance or financial fields is going to be in IC 36. This is going to include services like investing, appraising, banking or credit unions and real estate services that delve into finance (brokerage, listing, escrow, management).

What's New for International Class 36?

The classification guide is constantly being updated with new goods or services. As the marketplace changes, the trademark office must adapt. Here are some of the 2009 listings for international class 36, good plus date added to the guide:

• Charitable fund raising services by means of a golf event 6 Aug 09
• Electronic financial trading services 10 Sep 09
• Financial services, namely, raising debt and equity capital for others 17 Sep 09
• Providing a website featuring non-downloadable videos in the field of financial planning 26 Mar 09

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Trademark International Class: Class 35 (Advertising and Business Services)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 35.

What is International Class 35 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 35's short title is advertising and business services. Pretty vague, eh? The USPTO has 1476 accepted descriptions that fit into IC 35; check them out here.

The first part of IC 35’s description, advertising, is straightforward. If it’s advertising, marketing or promoting services that are being offered, then IC 35 is where it goes. Now there are going to be some exceptions, as with anything related to trademarks.

Tangible advertising goods, such as signs, flyers, brochures, are NOT going to be in IC 35 as those items are not technically a service though are definitely part of a service; tangible paper-based advertising goods are in IC 16. Training, coaching, educating, etc. about advertising, marketing or promotion is NOT going to be in IC 35 but rather in IC 41, which is the educational class.

The second part of IC 35’s description, business services, is not straightforward at all. Semantically, all services could be considered as business services, yes? No way says the trademark powers that be; at least no way if those services can fit within a different international classification.

So What Business Services are in International Class 35?

Ooh this is a tough nut to crack as there are definitely some discernible patterns within this class but there’s a whole lot of slap-dash in here too. Here’s a general breakdown:

• If your services consist, in part, of the word business, you’re likely in IC 35. This includes consulting, advising, administration, management, development, information, organization, research, planning, etc.

• Employment services are in this class, which includes hiring, recruiting, placement, staffing and career networking.

• Retail services selling ANY products under the sun, which means a brick and mortar store, online retail sites, mail order, catalog, wholesale, etc.

Obviously there’s a whole host of other services in IC 35. If you’re wondering about your services, feel free to email me.

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