A trademark can be any name, symbol, design, smell, sound, or anything else that is sufficiently distinctive to be used to distinguish the source or origin of goods or services. For example, McDonalds has many trademarks, including golden “M”-shaped arch. Ideally, when customers see the golden “M”, they immediately think of McDonalds rather than some other company.
Historically, the first law regarding trademarks was passed in 1266, under the reign of Henry III, requiring all bakers to use a distinctive mark for the bread they sold.
Trademarks are basically identifiers. They let the relevant consuming public know what businesses are responsible for putting specific goods and services into the marketplace. This protects both the public from confusing genuine goods and services with knockoffs from competitors, and also protects trademark holders from having the public confuse their genuine goods and services with those of competitors.
People generally distinguish trademarks from service marks, but they are pretty much the same thing. The main difference is that trademarks are marks used with respect to goods (objects, software, etc.), while service marks are used with services (painting, banking, insurance, etc.) In addition to the traditional logos we all think of, there are many non-traditional trademarks that distinguish the trademark owner using color, sound, smell, motion, or 3D designs. Word marks consist entirely of words, without any special coloring or fonts, and are usually written in all capital letters. Word marks that include words as well as special coloring or fonts, and/or images, are considered word plus design marks.
A service mark is a mark used to distinguish a source of origin of services. The Apple logo is an example of a trademark, and is used on the company’s products, such as Macbook and iPhone.
“United Airlines” and their tagline “Fly the Friendly Skies” are examples of service marks. United isn’t selling airplanes, but a service.
Some companies, Amazon being a major example, utilize both since they provide both goods- such as their Kindle e-reader, and services- such as online shopping and Prime video.
The word trademark is often used to refer to both trademarks and service marks. The symbol designations are ™ and ℠, but the ™ symbol is often used for both product and service marks.
A business name- McDonalds; a product name- iPhone; a logo or label- the Nike swoosh; a symbol or design- Shell’s yellow shell with red outline, a sound- the mockingjay whistle from the Hunger Games; a product package- Tabasco Sauce.
From least to most distinctive, trademarks and service marks are commonly referred to as being generic, descriptive, suggestive, or arbitrary.
(1) Generic marks are terms commonly used by the public to refer to goods or services. For example, a generic name for a steakhouse is “steakhouse”. It would be improper to allow someone to register the term “steakhouse”, when referring to steakhouses. Generic marks are never registered for the goods or services that they describe.
(2) Descriptive marks merely describe goods or services to which they relate, and straddle the world between registrable and non-registrable marks. To the extent that descriptive marks are a little better than generic, they are unregistrable. “WORLD’S BEST STEAKHOUSE” would be an example of an unregistrable descriptive trademark because “World’s Best” merely describes what type of steakhouse it is. Descriptive marks can be registered if they achieve “secondary meaning”, in which the relevant public comes to associate the mark with a particular supplier of the goods or services. For example, the color brown is in the public domain. However, a medium shade of brown is now associated with delivery trucks because the general public has come to associate that color with UPS.
(3) Suggestive marks use suggestive terms to imply what the good or service is. “SIZZLER” is a marvelous suggestive mark. It doesn’t directly describe a steakhouse, but rather implies steakhouse because sizzling makes people think about steak.
(4) The strongest type of mark is arbitrary. It doesn’t suggest or describe anything, but is rather completely made up. “CLAIM JUMPER” is an example of an arbitrary trademark for a steakhouse because the name doesn’t relate to steak at all and is a made up name. XEROX for photocopy machines would be another example.
You can always start with a simple Google search. But the USPTO maintains a searchable database that lists every trademark application and mark registered with the USPTO. There is a link to a video that will give more information on conducting a clearance search.
Beyond that, there can be marks registered with states, that aren’t registered with the USPTO. This is to say, merely searching the USPTO will be insufficient.
If you live outside the US, the PTO requires the use of U.S. Counsel in filing a trademark application. If you reside in the U.S., it’s not necessary, but highly recommended to employ a U.S. licensed attorney specializing in trademark law to guide you through the process.
In order to be eligible for registration, a mark has to either be in use, or intended to be used in commerce.
If the mark is in use, you are filing an application on the basis of “in use”. In this case, you will state the date of first use and a specimen of use.
If the mark hasn’t been yet used in commerce, you must file on the basis of “intent to use”. If you file on “intent to use”, you must begin actual use of the mark in commerce before the USPTO will register the mark.
The functionality doctrine seeks to prevent a business from monopolizing a functional product feature under the guise of identifying it as the source identifier. Functional features should be protected under patent law, provided of course that the features are novel and nonobvious. The trademark office might also reject registration for marks that rely entirely on ornamental features, especially if the ornamental feature contributes to demand for the product.