WHAT IS A TRADEMARK OR A SERVICE MARK?

In general, a trademark is a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods that are used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another.

Trademarks can be expressed in the following forms using one or more of these:

• A word or words: (Gucci, Adidas, Jo Malone)
• Designs or logos: (Nike swoosh)
• Letters or Numbers
• Slogans: (“Where’s the beef?” “Bounty, the quicker picker upper” “Nationwide is on your side”)
• Shape of a product: (coke bottle)
• Sounds: (NBC musical notes, Disney jingle)
• Smells
• Colors (Valentino Red)

In essence, it provides the public with information regarding the source of the product and distinguishes it from others. Strong trademarks immediately trigger a recollection of a product when the name is mentioned or logo is seen. Examples of strong trademarks are Louis Vuitton, Hermes, BMW, Gucci, Bounty, Tidem, and Nike. As you read these words representing the different trademarks you most likely immediately (i) know the brands that the products represent and (ii) recall the accompanying logos related to the trademark.  If the word, phrase or logo doesn’t differentiate your product from others then it is not a trademark. A trademark, in essence, is really granted by the public, the consumer’s recognition of the product or service based on the phrase, symbol, design or combination is what determines whether the phrase symbol, design or logo has achieved the status of a trademark. Thus, a trademark does not need to be filed with the state or federal government but doing so will allow the owner of the registered trademark to exclude anyone else from using the mark. In having this right of exclusivity the trademark owner can stop anyone from using a mark that would be confusing to its trademark which has gained amongst its consumers.

The purpose of Trademarks:

A trademark is a product identifier that provides the public with quality assurance.  The consumer is assured that the marked product or service is of recognized quality, such as certain designer goods that are meant to last. The owner of the trademark receives assurance that its customers recognize and come back to the product or service and repurchase same.

Other Types of Trademarks:

Normally when we refer to trademarks we are referring to words or symbols that identify goods. However, there are other forms of marks, that are referred to as “trademarks” but they identify things other than products:

• Service Marks:

Service marks are marks that are used to identify services.  Prior to federal registration, companies can use the service mark symbol ℠ (the company name followed by the subscript sm) to identify the services.

• Membership Marks:

Membership marks are marks that are used to identify membership in a particular group or organization.

• Certification Marks:

Certification marks are used to indicate that a particular organization or board has approved the quality of goods or services   on which the mark is used. Examples are the “certified organic” mark or “gluten-free” 

• Trade Dress:

Trade dress refers to the appearance of a product. Unique packaging or product design may serve to identify the source and quality of the goods.  A great example is the robin’s egg blue used by Tiffany for their gift boxes, shopping bags, and jewelry pouches.

It is possible for a word, phrase, symbol, or design, or a combination thereof to identify goods and services simultaneously.  One example is Sephora which has a service mark that represents its business of providing retail service and Sephora also sells products under its own trademarked brand name. Many restaurants with famous service marks such as California Pizza Kitchen, Olive Garden and TGI Friday’s also started out as service providers that now sell food products in grocery stores under their trademark.  In general, a trademark or service mark often gains recognition as one or the other prior to “crossing over.”

Answers to Frequently Asked Questions

Is a Trademark the same as a business name?

A trademark is not necessarily your business name. Many clients say “I’d like to trademark my LLC” or “I’d like to trademark my business.” which may not be the way that their product or service is identified by the public.  Additionally, just because a business name is available on the department of state’s website doesn’t mean that the trademark is available to represent a business’ goods or services. Learn more about this process here.  If you have a trademark that you would like to register we provide flat fee trademark service that you can order online, or you can contact us for a consultation.

What International classes for my goods and services you should designate for your trademark?

When you prepare to apply for the registration of your trademark, you will need to designate the international class number(s) for your trademark that is/are appropriate for the identified goods and/or services. You can find a list of the trademark international class numbers along with a short description here. If you have a trademark that you would like to register we provide flat fee trademark service that you can order online, or you can contact us for a consultation.