Amongst the various definitions of a trademark, the definition given by the United States Patent Attorney and Trademark Lawyer Office (U.S. PTO) is probably the most comprehensive. The U.S. PTO defines a trademark as “.. a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.”
To put it simply, a trademark identifies the source or origin of goods or services and distinguishes it from a competitor’s product or services. Therefore, a trademark lawyer represents the goodwill of a product or service and grants the owner of the trademark the right to prevent others from using the same or a confusingly similar mark for similar goods or services.
More than one trademark may be used by an entity to identify the source or origin of goods or services. For example, Coca-Cola®, Coke® and It’s the Real Thing® are registered trademarks of the Coca Cola Company and are used to identify the Coca-Cola beverage.
It is important to remember that trademark rights arise by first use, not by first registration.
Under common law, trademarks is a form of property; like property, trademarks may be sold, assigned, mortgaged, licensed, etc.
When a trademark is used in association with services of a product and not goods, the mark is termed a service mark. For example, a service mark would be used by a dry-cleaning service, an accounting service, a restaurant, etc., to identify the service rather than the goods they market.
As used in this book, the terms “trademark” and “mark” are synonymous refer to both trademarks and services marks.
A logo is a graphical sign or representation which together with its unique typeset forms a trademark. When a word that is descriptive of goods or services cannot be trademarked, it may be possible to get protection for that word when the word is dressed up as a graphical mark and the word is disclaimed from the mark. The graphical representation of the word may make the word distinctive. Disclaiming a word means that the applicant will not claim protection or right to the disclaimed word apart from the mark. An example of a logo is Apple Inc.’s logo of an apple with a bite missing.
A trade name is a trademark for the name of an entity or business. A trade name can be registered as a federal trademark, trademark lawyer if the trade name is used as a trademark, i.e., if the trade name is used to identify the origin or source of goods or services. A trademark is not intended to identify the entity itself which is what a business name does. For example, the trade name Coca-Cola® is registerable as a trademark for the Coca-Cola brand of beverage.
A collective mark is usually owned by an association or organization, the members of which use the mark to distinguish their goods or services from the goods or services of other associations or organizations. For example, the collective mark CA® is used by accountants to identify their membership in the Institute of Chartered Accountants, and the collective mark Realtor® is used by real estate agents to identify their membership in real estate services provided under this mark.
A certification mark is used to certify that goods or services provided by a manufacturer or an organization under the certification mark complies with the requirements of the manufacturer or organization and are accredited by that organization. A certification mark may be displayed on the product of the manufacturer as a certification of such compliance with the regulations of an organization. A certification mark is typically owned by an organization and licensed to entities that comply with the owner’s requirements. The Good Housekeeping Seal Of Approval for home products is an example of a certification mark.
A trade dress refers to the visual appearance of the product - its packaging or image. It does not refer to words, logos, etc. The Law Lexicon, explains that trade dress is “the non-functional physical detail and design of a product or its packaging, which indicates or identifies the product's source and distinguishes it from the products of others”.
The purpose of trade dress protection is to prevent others from using the same or confusingly similar packaging or design for their products. Like trademarks, trade dress may be registered with the U.S. Patent Attorney and Trademark Office. The process for federal registration of a trade dress is similar to that of registration of trademarks and service marks. The application must be filed under the owner’s name under either an actual use application, or an intent to use application. If the application is filed under actual use, an appropriate specimen showing the goods in commerce must be submitted along with the application for registration. The trade dress to be protected must be adequately described in the application. If no conflicting trade dress has been previously registered, the application will be published for opposition. The trade dress will be registered after the opposition period, if no opposition was made within the period. The registration will last for 10 years and may be renewed for successive 10 year periods as long as the trade dress is still being used.
Word Mark and LOGO:
There are three basic ways of applying for a mark. An applicant can apply for a standard character mark, which covers a word or words, in any font, color, size or style, often referred to a word mark. An applicant may also apply for a logo or stylized mark, which only covers that logo in one specific style, position and font. Registration of a logo prevents others from using the similar design. An applicant may also file a mark for a combination of a word mark and a logo.
IP Legal Services,
36 Greenleigh Drive, Sewell,
Trademark Lawyer and Our Patent Attorney Meets With U.S.PTO