Thursday, March 05, 2009

What is a Trademark?

While the USPTO does use the term trademark to denote businesses offering goods or services, there is a distinction between a trademark and a service mark. To be clear, there is no difference between trademarks or service marks when it comes to needing comprehensive research or filing a Federal application. All of that remains the same.

For the most part determining if you're offering goods or services is pretty simple. For instance, toys are a tangible good therefore Mattel® is technically a trademark while tax preparation is a service there H&R Block® is technically a service mark.

There are plenty of companies that have both. Nike®, for one, offers a line of branded goods as well as retail store services, therefore, they technically hold a service mark / trademark combination.
Where folks get confused when it comes to trademarks is mistaking products or goods for services. Let's take a look at the USPTO's criteria for determining what is or isn't a trademark.

The term "trademark" includes any word, name, symbol, or device, or any combination thereof-

(1) used by a person, or


(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Essentially, one can take this to mean that the owner of the trademark is either 1) CURRENTLY selling the product in association with the word, name, symbol or device in 2 or more states, OR 2) WILL, in the future, be selling the product in association with the word, name, symbol or device in 2 or more states.


This can be translated to: you must sell a product, displaying the word, name, symbol, or device, which is your UNIQUE product. For example, in the instance of clothing, you can not purchase a Hanes® tshirt and merely print a name across the front and call that your UNIQUE product. The USPTO would consider that shirt a product of Hanes® that you have merely made ornamental.


In the case of either trademark or service marks, keep in mind that merely displaying the symbol next to the word, name, symbol, or device does not create or denote any level of protection unless the application has been filed: "The presence of the letters 'SM' or 'TM' cannot transform an otherwise unregistrable designation into a mark."

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