Trademark - Overview

By: Cassie Gaff, Janelle Wasson, Aleena Sallot

What is a Trademark?

Definition: A symbol, word, or words, legally registered or established by use of representing a company or product.

TM or SM Symbol: Pending Trademark Application or Simply claiming rights

® Symbol: 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.

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.

Types of Trademarks

Descriptive: trademarks are often the easiest to market because they describe the goods or services they are marketed with. Example: Honey Roasted Peanuts

Suggestive: indirectly refer to the goods or services with which they are associated. Example: Jaguar cars

Arbitrary: marks are common English words which are used in a way such that their normal meaning bears no relationship to the goods or services to which they are applied. Example: Apple Computers

Fanciful: are generally "coined" terms that had no meaning before their use as a trademark. Examples: Oreo, Kodak

Process to get a Trademark

Step 1: Identify if you need trademark protection

Step 2: Determine if you need to hire an attorney

Step 3: Identify mark format

  • Stand Character Mark
  • Stylized/Design Mark
  • Sound Mark

Step 4: Decide what goods and/or serivces the mark will apply to

Step 5: Research to identify whether the rademark in question is already in use

Step 6: Use the proper filing technique for a trademark application

Step 7: USPTO (United States Patent and Trademark Office) reviews application

  • Assign serial number and forward it to an examining attorney

Go to step 8 or 9 for your circumstances

Step 8: USPTO issues letter or office action which can be used to refuse the trademark or require corrections. Applicants response must be sent within 6 months

Step 9: USPTO publishes mark if examining attorney doesn't raise any questions or applicant overcomes all objections

Popular Trademarks

Did You Know?

· Heroin got its name because the Bayer Company marketed it as an over the counter drug under the trademark Heroin. Their product was so popular that it just caught on, and today we don’t even think that there were once other brands of Heroin!

· Jay-Z and Beyoncé successfully trademarked their daughter’s name, “Blue Ivy Carter.” Two other people tried to trademark “Blue Ivy Carter.” However their attempt was unsuccessful because it is illegal to register a trademark with illegitimate affiliation with a celebrity. You can still name you child Blue Ivy or any other trademark name; Jay-Z and Beyoncé simply registered their daughter’s name under the category of child or baby products. This way, you cannot legally start a stylish baby clothing line bearing the name Blue Ivy.

· Porsche Cayman vs. Crocs Cayman. Porsche, the famed German car company, is entangled in a legal spat with Crocs, the maker of rubber shoes. At issue: The shoe company's use of the name Cayman for a line of footwear. The company intends to vigorously defend itself against these claims.