Trademark 101: Should You Trademark?

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Now that we know what a trademark is and is not, let’s dive into the next logical question: should you trademark?

The easiest way to answer this question is to look at your business and your plans for it.

-          Is the name, logo, or slogan an integral part of your business?

-          Are you doing business on a statewide or nationwide or international level? If you’re only doing business citywide or countywide, do you see potential for geographical growth?

-          Would another business in your industry using the same or similar name hurt your business? In other words, is it possible you’d lose customers if someone had the same or similar name in your industry?

If you answered yes to any of the above then exploring a trademark is the way to go.

Here’s what a US Federal trademark gives you:

·         A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (whereas a state registration only provides rights within the borders of that one state, and common law rights exist only for the specific area where the mark is used);

·         Public notice of your claim of ownership of the mark;

·         Listing in the USPTO’s online databases;

·         The ability to record the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods; • The right to use the federal registration symbol “® ”;

·         The ability to bring an action concerning the mark in federal court; and

·         The use of the U.S. registration as a basis to obtain registration in foreign countries

Pretty nice perks, huh? If you’re still not sure if a trademark is right for you, please leave me a comment or send me an email shannon at tmexpress dot com

Trademark 101: What Isn’t a Trademark?

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Yesterday’s post was all about what a trademark is so today we’re going to talk about what a trademark is not. Knowing both sides of that coin will give you a clear idea if a trademark is right for you or not.

Let’s use yesterday’s examples as a jumping off point:

·         PEACE is the name of your new clothing line and your logo is the peace sign. Both of these things appear on the tags that are attached to the clothing items. You have a variety of designs and sayings that appear on the front of your clothing items, e.g. the front of a t-shirt.

·         LOVE is the name of your daycare services. Your slogan, Love blooms here, appears on the web site, the brochures for new parents, the signage inside & outside of the facility. There are also multiple heart designs, created by you, used in your advertisements.

·         HAPPINESS is the name you use for your invention, a new kind of food processor. You have stacks & stacks of technical documents explaining how your invention works and every page has the name at the top.

	POSSIBLE TRADEMARKS:	NOT A TRADEMARK:
PEACE	Name & heart logo as shown on the tags	Designs & sayings on the front of the clothing
LOVE	Name; slogan since it identifies the services and is used in the offering of those services	Multiple heart designs
HAPPINESS	Name of the food processor	Technical documents

So why are those items not trademarks? The main reason is that none of them identify the source (i.e. the origin) of the goods/services. Let’s do the breakdown explanation you all know by now that I love.

PEACE has a number of designs and sayings that appear on the clothing items, e.g. the front of a t-shirt. These items do not identify the clothing brand itself. They are merely decorative or ornamental.

LOVE uses a bunch of unique heart designs in their advertisements – billboards, leaflets, newspaper ads, etc. – but these designs are not used on the web site, the signage, etc. In other words, clients wouldn’t refer to these heart designs when looking for this business.

-          These designs may be eligible for copyright protection. We’ll get into that area of intellectual property at a later day.

HAPPINESS is the name at the top of the technical documents, which is not the good to be sold (i.e. the food processor) but rather is the technical explanation of how the good works. If you’re looking for a food processor, you’re not going to look for the technical mumbo-jumbo.

-          These technical documents would be part of your patent application. Again, we’ll explore that another day.

I hope this quick primer helps explain what a trademark is AND helps you decide if going the trademark route is right for you.

And if you’re still not sure, leave a comment or drop me a line – shannon at tmexpress dot com

Trademark 101: What is a Trademark?

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Welcome to the first day of class! Before we get into the nitty gritty of trademarks, let’s go back to the beginning. And the beginning of the beginning is defining what a trademark is and what a trademark is not.

Here’s what the USPTO says: “A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors.”

So, that’s clear, right? Mmhm, thought so. Let’s simplify this a bit.

First things first, we’re going to use the word trademark regardless if we’re talking about a business that sells products (i.e. goods) or services. Keep that in mind please.

Simply put, a trademark protects names, logos, or a combination thereof that are used for goods and/or services. Let’s break that down even further using examples:

·         PEACE is the name of your new clothing line and your logo is the peace sign. Both of these things appear on the tags that are attached to the clothing items. You have a variety of designs and sayings that appear on the front of your clothing items, e.g. the front of a t-shirt.

·         LOVE is the name of your daycare services. Your slogan, Love blooms here, appears on the web site, the brochures for new parents, the signage inside & outside of the facility. There are also multiple heart designs, created by you, used in your advertisements and on t-shirts worn by staff.

·         HAPPINESS is the name you use for your invention, a new kind of food processor. You have stacks & stacks of technical documents explaining how your invention works and every page has the name at the top.

What do you think could be a trademark? What isn’t?

	POSSIBLE TRADEMARKS:	NOT A TRADEMARK:
PEACE	Name & heart logo as shown on the tags	Designs & sayings on the front of the clothing
LOVE	Name; slogan since it identifies the services and is used in the offering of those services	Multiple heart designs
HAPPINESS	Name of the food processor	Technical documents

As you can see, the common denominator for those possible trademarks is that (1) they are names or logos or slogans and (2) are used to identify the source of the products (i.e. goods) and services. This last point is often a sticky wicket for folks. Let’s break these examples down even further to differentiate the source from the goods/services created.

PEACE and the logo identify the source (the clothing line) of the goods (the individual clothing items with the designs & sayings on them)

LOVE and the slogan identify the source (the daycare) of the services. In other words, that’s the name & slogan of the business.

HAPPINESS identifies the source of the tangible good (the food processor). This is the name that will be on the product itself, the tags, labels, packaging, etc.

Tomorrow, we’ll talk about what a trademark is not and, furthermore, how the examples of non-trademarks can be protected.

Specimens of Use for Service Marks

I’ve detailed the concept of specimens before but it’s a good idea to get into details about specimens as they apply to service marks.

The simplest explanation is that the USPTO wants something that clearly shows the mark (i.e. the name, the name & logo, etc.) AND something that once read it is obvious what services are being offered. In regard to service marks, this is accomplished in one of two ways: advertising or performing. Okay, so advertising – that’s pretty easy to understand, right? Brochures, yellow page ads, flyers, billboards, etc. In terms of providing a specimen showing the mark “as used in the course of performing services,” examples are best to illustrate this concept.

1) Amazon.com provides online retail services for a large number of goods. They provided a screenshot of their home page. Check it out here.

2) Starbucks provides coffee shop services and provided a picture of one of their coffee shops as a specimen. You can see it here.

Now the USPTO says that letterhead, business cards or invoices are acceptable but there’s a strict rule that must be adhered to – there must be an obvious association between the mark and the services. To avoid the dreaded office action, we recommend that our clients find another specimen as the USPTO tends to be rather strict about this.

We get a lot of calls from entertainers/bands and technically they’re offering entertainment services (live musical performances to be exact). Now providing an advertising specimen is still fairly simple here – a flyer advertising a show will suffice. When it comes to providing a specimen in connection with performance, the USPTO will accept a photograph of the group or artist “in performance with the name displayed,” e.g. name on a banner above the stage, name printed on the drum, etc.

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What is NOT a Service Mark?

Now that we’ve determined what a service mark is, let’s get into more detail about what a service mark is not.

There are 5 examples the USPTO provides and it’s my guess that these are often filed for accidentally. I know at TradeMark Express we’ve received questions about all 5 of these “services.”

1) Contests and Promotional Activities

Now you’d think that contests and promotions are obviously services, right? It is a real activity and is done for the benefit of others. But it fails the 3rd test in that it’s not necessarily distinct from the primary services. Contests and promotions are typically just tools of advertising. There is an exception which is that if the contest or promotion goes “above and beyond what is normally expected of a manufacturer in the relevant industry.”

For example, “clothing manufacturer’s conducting women’s golf tournaments held to be a service, because it is not an activity normally expected in promoting the sale of women’s clothing.”

2) Warranty or Guarantee of Repair

These activities are merely ancillary to the primary service of repair, auto sales, etc. Again, there’s an exception to this rule. “A warranty that is offered or charged for separately from the goods, or is sufficiently above and beyond what is normally expected in the industry, may constitute a service.”

3) Publishing One’s Own Periodical

Now if you are publishing other parties’ periodicals that is considered to be a service. “Providing advertising space in one’s own periodical may be a registrable service, if the advertising activities are sufficiently separate from the applicant’s publishing activities.”

4) Soliciting Investors

Offering shares and publishing reports for shareholders are not separate services as these are routine corporate activities. Now investing funds for others is definitely a registrable service.

5) Informational Services Ancillary to the Sale of Goods

Providing information, instructions, details, etc. about your goods, the purpose of your goods, how to use your goods, etc. is not considered to be a separate service.

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What is a Service Mark?

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.

Where folks get confused when it comes to service marks is mistaking ideas or concepts for services. Let’s take a look at the USPTO’s criteria for determining what is or isn’t a service mark.

1) Service must be a real activity.

The best way to explain this is to explain what is not considered to be a real activity – ideas, concepts, recipes, systems, processes, methods.

2) An activity must be primarily for the benefit of someone other than the applicant.

Who benefits from the activity/service? If it’s yourself or your company, you’re not offering a service in the technical sense of the word. If it’s for others, you are.

“While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others.”

3) Sufficiently distinct from activities involved in sale of goods or performance of other services.

This sounds complicated but it’s really not at all. Basically, whatever service is filed for must be distinctive from the primary activity. “For example, operating a grocery store is clearly a service. Bagging groceries for customers is not considered a separately registrable service, because this activity is normally provided to and expected by grocery store customers, and is, therefore, merely ancillary to the primary service.”

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®, Registered vs. TM, Trademark

The TM or SM symbol is to be used for marks that either have a pending trademark applicationclaiming the rights to the mark.

The ® symbol is to be used for marks that have a Federally registered trademark.

Trademarks can be names of products or services, logos, slogans, packaging and even sounds and smells. In essence, a trademark can be almost anything that is used to identify a particular product or service. Registering a trademark grants the owner exclusive rights to the mark within the specified industry. Of course, it's necessary to research the mark comprehensively

Proper Use of the Symbols:

You can freely use the TM or SM symbol while your application is pending OR if you're simply claiming the rights to the name. Sometimes these symbols are governed by local or state laws so it may be best to double check. But more often than not, you're free to use it.

The ® symbol should only be used once you've received your Federal trademark registration. The typical placement for these symbols is in the right-hand corner/to the right of your name and/or logo. For instance, TradeMark Express ® or as displayed on our home page:

Trademark vs. Service Mark

Simply put, trademarks are for goods while service marks are for services. When discussing either, it is common to use the term "trademark", even when discussing a service use, because the handling of either is interchangeable by both the USPTO and all 50 Secretary of State Offices.

The USPTO says that a "service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms 'trademark' and 'mark' are often used to refer to both trademarks and service marks."

Let's look at each term in more detail

Trademark:

The USPTO's definition: trademark "protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods."

If your name and/or logo appear on the tangible goods that you're selling, you'd be filing for a trademark. For instance, let's say you want to protect the name of your clothing line. As long as the name appears on the hang tag, label or the packaging the clothes come in, that would suffice as proof of you using the name in connection with a clothing line. And therefore, you'd file for a trademark.

If the name appears only on the front of the shirt, that's ornamental use and therefore not eligible for trademark protection.

Service Mark:

The USPTO's definition: service mark is "a word, name, symbol or device that is to indicate the source of the services and to distinguish them from the services of others."

If you're selling services in connection with a name and/or logo, you'd be filing for a service mark. TradeMark Express is our service mark that we use in connection with our trademark research & application services.

For example, you are opening a restaurant using a specific name. The name as it appears on any signage, menus, advertising, etc., would suffice as proof of your use in connection with your services.