CLIENT PAGE
A Brand Apart
How to select, protect, and inspect your trademark.
By Tim D. Chheda
There are four types of trademarks: fanciful/arbitrary, suggestive,
descriptive, and generic. From the point of view of the U.S. Patent and
Trademark Office, or PTO, the first two types are green lights (easy to
approve and you are given strong rights), the third is a yellow light
(difficult to approve and you are given weaker rights), and the fourth
is a red light (will never be approved and you are given no rights). As
a non-specialist, what do you need to know about trademarks? Select,
protect, and inspect.
Selecting a
Mark
From your point of view, the above means that you should select a mark
from the first two types in order to save money. Only select a mark from
the third type if you “fall in love” with it. In other words, if the
expense of a difficult approval process is worth the marketing value the
mark will provide. Avoid selecting a mark from the fourth type because
you will waste your money.
A fanciful mark is a word, phrase, or design that has no other
meaning—it is “made up.” Examples are Exxon, Clorox, and Polaroid. These
words are not part of any language. An arbitrary mark is a common word,
phrase, or design that does not describe or suggest the good or service
sold under the mark—it is a “real” word, phrase, or design that has no
relation to the good or service. Examples are Shell (gasoline), Ice
Cream (chewing gum), and GUESS? (fashion brand). The word “shell” can be
found in an English dictionary, but the definitions listed do not
describe or suggest gasoline, making it an arbitrary mark for that
good.
A suggestive mark is a word, phrase, or design that suggests, but does
not describe, characteristics or functions of the good or service sold
under the mark. If the characteristics or functions of the good or
service are not explicit from the mark, but with an exercise of
imagination could be conveyed by the mark, the mark is suggestive.
Examples are Stronghold (nails), Coppertone (tanning goods), and Rapid
Shave (shaving cream).
A descriptive mark is a word, phrase, or design that immediately
identifies the characteristics, functions, ingredients, or purpose of
the good or service sold under the mark. Examples are ChapStick (chapped
lip treatment), International Business Machines (computers), and Sharp
(televisions). Descriptive marks straddle the border of what is
protectable.
Generic marks are the common name of a class of things such as books,
water, and phones. They are not protectable for the good or service
named—the word “phone” cannot be protected by itself in order to sell
phones.
Protecting Your Mark
After you have selected your mark, registering your mark with the PTO
puts others on notice of your rights to the mark and affords additional
protections. The registration application may be filed before or after
you begin using the mark.
The registration application includes the mark itself and a listing of
the goods or services offered under the mark. If the mark is in use, it
is necessary to provide a specimen showing how the mark is used. If the
mark is not in use, a specimen can be provided at a later date.
After a registration application is filed, an examiner at the PTO
examines the application. Upon approval, the mark is published by the
PTO. After publication, others will have a limited time to oppose the
application; if no opposition occurs, the registration is issued by the
PTO.
A trademark registration can remain valid as long as the mark is being
used and the registration is periodically renewed at the PTO.
Inspecting Competitors’ Marks as Well as Your
Own Mark
It is vital to inspect your competitors’ websites, advertising, and
other branding for marks confusingly similar to your mark. Additionally,
such inspection allows you to discern their strategy regarding their own
marks. Consider setting up a monitoring schedule, such as a quarterly
review, to keep tabs on trends in the industry.
It is also vital to inspect your website, advertising, and other
branding for quality assurance and to avoid loss of rights. This
inspection may be part of the quarterly review described above. A
checklist of items for such an inspection may include:
• Are we using trademark registration symbols appropriately—the “®” symbol?
• Are our marks featured prominently and appropriately—not as nouns or verbs?
• Are there words, phrases, or designs important to our marketing that we have not registered?
• Have we expanded our goods or services into new markets (requiring updating our listing with the PTO)?
Remember to select, protect, and inspect.TBJ
TIM D. CHHEDA
is a patent and trademark attorney with Selman Munson & Lerner in
Houston.
