Trademark

 

Section 45 of the Lanham Act defines trademark as “any word, name, symbol or device, or any combination thereof.” There are four types of marks:

 

Trademark. Used to differentiate and to indicate the source of your goods from goods manufacture by others. It does not prevent others from manufacturing or selling similar products, it just prevents others from using confusingly similar marks.

 

Service Mark. Used to differentiate and to indicate the source of your services from services provided by others. It does not prevent others from providing similar services, it just prevents others from using confusingly similar service marks.

 

Certification Mark. Used to certify geographic region, characteristics of the goods or service such as quality or method of manufacturing, and labor group. Some examples are EnergyStar and UL (Underwriters Laboratories Inc.)

 

Collective Mark. Used by members of a cooperative, an association, or other collective group or organization. This mark indicates membership in a union, association or other organization and its intended to be used in commerce by member of those groups.

 

Even though you think you have the perfect mark for your goods and services, not all marks are registerable or legally protectable. Some factors that a mark owner must consider are the likelihood of confusion with other existing marks, and the strength of the mark. Also other factors such as whether the mark is scandalous, immoral, or deceptive will bar a mark from registration.

 

Likelihood of confusion comes into play when marks are similar (i.e. sound alike, look alike, have the same meaning, or create the same commercial impression). In addition, likelihood of confusion applies to related goods or services (i.e. shoes and clothing).

 

Strength of the mark refers to the hierarchy of distinctiveness. The hierarchy from most protectable to least is as follows: fanciful or arbitrary, suggestive, descriptive, or generic.

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