As industries race to gain a legal monopoly on their unique innovations through marks registration, we are inundated with an ever-increasing number of products with (™) and (®). But what exactly are behind these symbols? In this article, we will explore beyond the well-known icons and navigate the types of trademarks for products, the protection they entail, and we will touch on some prohibited terms.
Expert Insight: It is essential to distinguish among different types of trademarks to ascertain the best suitable protection for a product. Failing to do so could result not only in lawsuits but also in the outright dismissal of your trademark registration - both cases cost considerable loss in revenue. Thus, seeking advice from experts is a smart investment to take.
The trademark symbol (™) and its other iteration (®) owe their ubiquity to household names. Every brand, especially multinational corporations, affix their trademarks on every consumer product available in the market. Therefore, it is reasonable to deduce that marks have reached as far and wide as the global brands' coverage.
Despite the fact, only a fraction of the population knows a trademark's exact purpose, and even fewer people can identify its general types.
The uptrend compounds on the trademark's already-established familiarity, if not prominence, in our collective consciousness. After all, we see trademarks everywhere at almost every time. However, seeing is not the same as knowing.
Product trademarks are broadly classified into five categories. Generally speaking, these marks could either be a Generic Mark, Descriptive Mark, Suggestive Mark, Fanciful Mark, or an Arbitrary Mark. USPTO categorizes trademarks primarily based on the nature of the product relative to the mark under consideration.
Expert Insight: Classifying the type of mark for a specific product aids in clarifying which type to use for differing cases. This is especially helpful in avoiding costly mistakes. But aside from preventing potential economic losses, the classifications also indicate the corresponding level of protection. The succeeding sections explore the kinds of trademarks according to increasing protection coverage.
1. Generic Mark
Generic marks represent the everyday descriptions of a product or its seller. These could be common words such as “shoes,” “watch,” or “food.” But since these words belong to the public, a restaurant, for instance, cannot register a trademark for the term “restaurant.” And rightfully so, as such would result in an unfair monopoly over the whole F&B industry. Every other establishment could potentially be forced out of business. Hence, a company must add another modifier exclusive to its products for it to qualify for a generic mark.
2. Suggestive Mark
The above-discussed marks are merely the broad strokes. More specific, and therefore more protective, trademarks require a proportionate level of ingenuity to qualify. As a case in point, suggestive Marks register words that imply qualities of a product without necessarily relating to it in a literal sense. Imagination from the consumer's end is a primary consideration in classifying a mark as suggestive. A good example would be Netflix, as it alludes to its line of service without directly stating that it is an online streaming platform.
3. Descriptive Mark
While the generic mark may represent a product or its provider, a Descriptive Mark applies solely to the merchandise. But since these words are considered part of the universal language, they are still non-registerable. However, adding a signifier to describe a significant quality of the product could qualify it for trademark protection.
4. Arbitrary Mark
An Arbitrary Mark pulls words or phrases from the vernacular. However, these words should be entirely unrelated to the products they signify. The caveat then becomes the increased cost of advertising strategies. Efforts should focus on acculturing the audience with the new semantic association. Nevertheless, this should not dishearten, as success would mean significant returns. Take Apple, for example, a brand named after a fruit. It sells electronic products famously known not just as luxury devices, but also quite ironically as inedible goods. A considerable portion of their success is attributable to the synergy of their effective marketing and careful Intellectual Property management.
5. Fanciful Mark
This kind of trademark is indeed the easiest one to register. It only requires a new word that does not presently hold any meaning to the general public. Albeit easier to file, fanciful marks require informed forethought, too. In particular, the company should carefully examine how the audience would receive the brand. It is best to have diligent research on whether it would be easy to remember, spell, or pronounce. Brands would most likely want their trade to gain positive attributions, so companies should also consider their fanciful mark's cultural overtones.
USPTO upholds absolute grounds on banning some words and terms for trademark registration; dismissals generally stem from the potential for misinformation or confusion. However, other reasons could also disqualify an application:
- As mentioned earlier, generic names are usually barred from the outset as they could create an unreasonable monopoly over an industry.
- Surnames are also forbidden from registration to avoid an applicant from obtaining exclusive rights to a name shared by multiple families.
- Geographically descriptive or misleading terms cannot be registered legally to prevent a specific location from gaining exclusive control over a product type. On the other hand, products that claim false origins are also disallowed from as these maliciously confuse consumers.
- Offensive and scandalous terms are inadmissible for registration as well. In this clause preventing the use of immoral marks, Intellectual Property demonstrates its mandate to protect not only the businesses but also the public interest.
- As alluded to earlier, trademark applications exclude misleading and deceptive terms. These marks deliberately skew expectations and misinform consumers.
Expert Insight: Aside from the aforementioned absolute grounds for rejection, there are also relative grounds on which applications may encounter issues. Understandably, a trademark would not be granted if there is an existing right for a similar product. Having identical marks, or even those closely resembling each other, would cause damaging confusion for everyone. Furthermore, conflict with existing rights outside Intellectual Property legislation could also lead to legal impediments. Cultural, social, and personal freedoms should, by all means, maintain integrity throughout the registration process. It would be best to invest in a qualified firm to avoid potential damages.
Make Your Mark
In conclusion, the symbols (™) and (®) hold more complicated meanings beyond being mere emblems affixed to brands. They protect both businesses and consumers from any offense through stringent rules on prohibited actions. For entrepreneurs, both emerging and established, knowing the criteria and level of protection involved in each type would prove indispensable in optimizing your Intellectual Property portfolio.
Originally published by Abou Naja, August 2020
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.