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NAMING YOUR COMPANY

Types of Trademarks

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The term "trademark" is commonly used to describe many different types of devices that label, identify, and distinguish products or services in the markeplace. The basic purpose of all these devices is to inform potential customers of the origin and quality of the underlying products or services.

What is a trademark?
A trademark is a distinctive word, phrase, logo, Internet domain name, graphic symbol, slogan, or other device that is used to identify the source of a product and to distinguish a manufacturer's or merchant's products from others. Some examples are Nike sports apparel, Gatorade beverages, and Microsoft software. In the trademark context, " distinctive" means unique enough to help customers recognize a particular product in the marketplace. A mark may either be inherently distinctive (the mark is unusual in and of itself, such as Double Rainbow ice cream) or may become distinctive over time because customers come to associate the mark with the product or service (for example, Safeway markets).

Consumers often make their purchasing choices on the basis of recognizable trademarks. For this reason, the main thrust of trademark law is to make sure that trademarks don't overlap in a manner that causes customers to become confused about the source of a product. However, in the case of trademarks that have become famous -- for example, McDonald's -- the courts are willing to prohibit all use of the trademark (or anything close to it) by anyone other than the famous mark's owner. For instance, McDonald's was able to prevent the use of the mark McSleep by a motel chain because McSleep traded on the McDonald's mark reputation for a particular type of service (quick, inexpensive, standardized). This type of sweeping protection is authorized by federal and state statutes (referred to as antidilution laws) designed to prevent the weakening of a famous mark's reputation for quality.

What is a service mark?
For practical purposes, a service mark is the same as a trademark -- but while trademarks promote products, service marks promote services and events. As a general rule, when a business uses its name to market its goods or services in the yellow pages, on signs, or in advertising copy, the name qualifies as a service mark. Some familiar service marks: Amazon.com (retail Web site), Jack in the Box (fast-food service), Kinko's (photocopying service), ACLU (legal service), Blockbuster (video rental service), CBS's stylized eye in a circle (television network service), and the Olympic Games' multicolored interlocking circles (international sporting event).

What is a certification mark?
A certification mark is a symbol, name, or device used by an organization to vouch for products and services provided by others -- for example, the " Good Housekeeping Seal of Approval." This type of mark may cover characteristics such as regional origin, method of manufacture, product quality, and service accuracy. Some other examples of certification marks: Stilton cheese (a product from the Stilton locale in England), Carneros wines (from grapes grown in the Carneros region of Sonoma/Napa counties), and Harris tweeds (a special weave from a specific area in Scotland).

What is a collective mark?
A collective mark is a symbol, label, word, phrase, or other mark used by members of a group or organization to identify goods, members, products, or services they render. Collective marks are often used to show membership in a union, association, or other organization.

The use of a collective mark is restricted to members of the group or organization that owns the mark. Even the group itself -- as opposed to its members -- cannot use the collective mark on any goods it produces. If the group wants to identify its product or service, it must use its own trademark or service mark.

Example
The letters " ILGWU" on a shirt label is the collective mark that identifies the shirt as a product of a member of the International Ladies Garment Workers Union. If, however, the ILGWU wanted to start marketing its own products, it could not use the ILGWU collective mark to identify them; the union would have to get a trademark of its own.

What is trade dress?
In addition to a label, logo, or other identifying symbol, a product may come to be known by its distinctive packaging -- for example, Kodak film or the Galliano liquor bottle -- and a service by its distinctive decor or shape, such as the decor of Banana Republic clothing stores. Collectively, these types of identifying features are commonly termed " trade dress." Because trade dress often serves the same function as a trademark or service mark -- the identification of goods and services in the marketplace -- trade dress can be protected under the federal trademark laws and in some cases registered as a trademark or service mark with the Patent and Trademark Office.

What kinds of things can be considered trademarks or service marks?
Most often, trademarks are words or phrases that are clever or unique enough to stick in a consumer's mind. Logos and graphics that become strongly associated with a product line or service are also typical. But a trademark or service mark can also consist of letters, numbers, a sound, a smell, a color, a product shape, or any other nonfunctional but distinctive aspect of a product or service that tends to promote and distinguish it in the marketplace. Titles, character names, or other distinctive features of movies, television, and radio programs can also serve as trademarks or service marks when used to promote a service or product. Some examples of unusual trademarks are the sound of a Harley Davidson motorcycle, the pink color of housing insulation manufactured by Owens-Corning, and the shape of the Galliano liquor container.

What's the difference between a business name and a trademark or service mark?
The name that a business uses to identify itself is called a " trade name." This is the name the business uses on its stock certificates, bank accounts, invoices, and letterhead. When used to identify a business in this way - -as an entity for nonmarketing purposes -- the business name is given some protection under state and local corporate and fictitious business name registration laws, but it is not considered a trademark or entitled to protection under trademark laws.

If, however, a business uses its name to identify a product or service produced by the business, the name will then be considered a trademark or service mark and be entitled to protection if it is distinctive enough. For instance, Apple Computer Corp. uses the trade name Apple as a trademark on its line of computer products.

Although trade names by themselves are not considered trademarks for purposes of legal protection, they may still be protected under federal and state unfair competition laws against a confusing use by a competing business.

When can an Internet domain name be a trademark or service mark?
A domain name, such as nolo.com, qualifies as a mark when it is used in connection with a Web site that offers goods or services to the public. This includes all sites conducting e-commerce and sites, such as Yahoo.com, that provide Web-related services.

If my trade name is registered with the Secretary of State as a corporate name or placed on a fictitious business name list, can I use it as a trademark?
Not necessarily. When you register a corporate name with a state agency or place your name on a local fictitious business name register, there is no guarantee that the name has not already been taken by another business as a trademark. It is only the trade name aspect of the name that is affected by your registration. This means that before you start using your business name as a trademark, you will need to make sure it isn't already being used as a trademark by another company in a context that precludes your using it.

Copyright © 2000 Nolo.com Inc.




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