Types of Trademarks
There are many different types and categories of trademarks. Certain categories of trademarks relate to the type of thing being protected, while others related to the strength of the trademark. The strength of the trademark dictates the amount of protection the trademark receives.
Having a thorough understanding of the different types of trademarks will help you in selecting the strongest possible trademark for your brand. A knowledge of the types of trademark will also help you recognize the limitations of protection that come with using certain kinds of trademarks.
What is a Trademark?
A trademark is generally word or phrase that distinguishes the source of a company’s goods or services from those of others. Having a registered trademark gives you the exclusive right to use the trademark in relation to the registered goods and services, so long as your business is operational. It is not a legal requirement to federally register your trademark, but doing so offers numerous legal advantages should an infringement occur. Even if your trademark is not federally registered, your trademark is afforded some degree of protection by common law rights.
Examples of Trademarks
Many people think of a trademark as simply the name of a company, but the range of what can be trademarked is large. Trademarks differ from copyrights and patents based on the classification of what is being protected. A patent is a property right related to a novel invention or design, while a copyright protects creative works of authorship.
Some examples of common trademarks are:
- Brand names: While this relates to the name of your brand, it is also possible to trademark a person’s name (a good example of this being Ralph Lauren or Coco Chanel). It is only possible to trademark a proper name if it is being used in commerce. For instance, when Beyonce filed an application to trademark her daughter’s name, Blue Ivy, the application stated she was intending to use the trademark in commerce to sell a wide variety of goods, including baby products and clothing.
- Symbols: Symbols can be trademarked, with perhaps the most recognizable trademarked symbols being McDonalds’ golden arches, or the Apple logo. When the symbol becomes famous enough, the company doesn’t even have to include its name in advertising in order for consumers to identify the business.
- Slogans or Catchphrases: Michael Buffer’s “Let’s get ready to rumble,” Emeril’s “Bam!” and even Paris Hilton’s “That’s hot” are all examples of trademarked catchphrases. Many of these phrases are ubiquitous enough that you might be surprised to find that they are trademarked, but the registration gives them the exclusive right to use the phrase in conjunction with specified goods and services.
Strength of A Trademark
Stronger trademarks are guaranteed greater protections and are more likely to survive the trademark application process. When speaking of the strength of trademarks, there are generally considered to be five categories.
- Fanciful: A fanciful trademark is widely considered the strongest type of trademark. These are words or phrases that were invented for the sole purpose of functioning as a trademark. The most famous examples of fanciful trademarks are “Xerox,” “Clorox,” and “Exxon.”
- Arbitrary: An arbitrary trademark uses a word or phrase that has no relation to the goods or services being sold. A classic example is “Apple” for a technology company. Other examples of arbitrary trademarks include “Camel” for a cigarette company, and “Amazon” for an ecommerce company.
- Suggestive: A suggestive trademark is another strong type of trademark that requires some imagination on the side of the consumer to relate the product or service to the trademark in question. For example, “Coppertone” as the name of a sunscreen company would qualify as a suggestive trademark. While it isn’t explicit that the product in question is sunscreen, the word “Coppertone” is suggestive of glowing skin and an attractive tan. Suggestive trademarks can be powerful marketing tools, as they inevitably cause the consumer to tie related ideas and words to the product or service being sold.
- Descriptive: A weak type of trademark is a descriptive trademark. These trademarks describe the products or services being sold in some way, so they don’t provide the strongest protection. For example, if you own a tire store, you likely couldn’t get away with trademarking the names “Reliable Tires” or “Safe Tires.” Trademarks that have proper names in them, such as “Smith’s Shoe Store” or “Emily’s Bakery” also fall under this category.
- Generic: A generic word is unlikely to be successfully registered for use in relation to those types of goods or services. The reasoning behind this is that no company should have the power to commandeer a common word or phrase used by similar businesses. For example, furniture store cannot be trademarked for use in relation to the sale of furniture. Trademarks can become generic over time, and thus lose much of their value if the word or phrase becomes synonymous with the type of product being sold. A classic example of this is “escalator” which was once a trademark. This typically occurs because the company in question was not diligent about responding legally to misuse of the trademark.
Trademark vs. Service Mark
A trademark is a word, phrase, symbol, or logo used to identify the source of a product. If your trademark is federally registered, you can use the ® symbol to demonstrate the ownership of the trademark. It is not required that you use the symbol, but doing so prevents potential infringing parties from invoking a defense of ignorance that the trademark in question is registered should an infringement lawsuit go to court. It also demonstrates that you take the protection of your brand seriously. The ™ symbol can be used even if your trademark is not federally registered. In the United States, using a trademark in commerce without registration can grant you common law rights.
A service mark differs slightly, as it denotes the source of services, as opposed to goods. The symbol for a service mark is ℠, but many people just use the ™symbol in connection with both goods and services. Many companies possess both service marks and trademarks. For example, the service mark of a maid service might be “Maid to Order.” The process for registering a service mark is similar to registering a trademark, and both are obtained through the USPTO. Many companies offer both goods and services and thus have registered trademarks and service marks. Starbucks, for example, is registered as a trademark (as the company sells beverage products) and a service mark (as they provide restaurant services to diners).
Trade Names and Trade Dress
Trade names are not necessarily interchangeable with a company’s trademark. A trade name refers to the company’s name as a whole, while a trademark relates to a specific good or service. Another name for a trade name is a “doing business as” name, and you might see the abbreviation (DBA) next to a company’s name indicating this. Trade names may or may not have any associated trademark rights. If a company never uses its trade name in front of consumers, it will not acquire trademark rights. While some people think registering their business name with their state grants some trademark rights, this is not the case.
The term “trade dress” refers to the appearance of a product. Not every trade dress is registered as a trademark since trade dress can only be registered as a trademark if it serves to identify the source of goods or services. An example of trade dress is the distinct shape of a Coca-Cola bottle. Trade dress cannot be registered as a trademark if it is purely functional since this will not distinguish the source of the goods. The shape of the Coca-Cola bottle, for example, isn’t designed because it’s the most efficient way to hold the liquid. Rather, it is designed to be distinct and readily identifiable as a product of the Coca-Cola company..
Collective and Certification Marks
A collective mark is used by an organization or association to signify membership in a certain entity. A collective mark can be used to signal that certain goods or services are emanating from a member of the organization in question. It can also be used to signify an individual’s membership to the organization. To use a collective mark, you typically have to pay membership fees. A common example of a collective mark is CPA, which is used to indicate membership to the Society of Certified Public Accountants.
Though similar to collective marks, certification marks are meant to indicate that a good or service has passed inspection or meets the requirements of a particular certifying organization. This is not only indicative of a certain standard of quality, but could also denote the geographic origin of the product, or describe a particular process with which a product was manufactured. For example, if an appliance displays the United States’ Environmental Protection Agency’s EnergyStar logo, this tells the consumer that the product meets certain standards in regard to energy consumption. It is not indicative of the source of the product.