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 both products and non-products, the protection they entail, and we will touch on some prohibited terms. For ease of reference, here is a comprehensive list of the general and specific types of trademarks:
General Types of Trademarks
- Generic Mark
- Suggestive Mark
- Descriptive Mark
- Arbitrary Mark
- Fanciful Mark
Specific Types of Trademarks
- Service Mark
- Certification Mark
- Collective Mark
- Trade Dress
- Trade Name
- House Mark
- Family of Marks
- Sound Mark
- Pattern Mark
- Position Mark
- Hologram Mark
- Multimedia Mark
- Motion Mark
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 or service 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.
Expert Insight: Within a year, from 2018 to 2019, Trademarks applications increased by 12.9%. Steadily rising since 2011, the past uptick was a record high for registrations of trademarks. And with identification markers for each brand becoming more specific, thereby crowding the market each day, it is essential to get acquainted with all the avenues in which you can protect your Intellectual Property.
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.
Additionally, more specific types of trademarks are also supported by international Intellectual Property conventions to ensure and protect the uniqueness of registered trademarks.
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.
General Types of Trademarks
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.
Specific Types of Trademarks
1. Service Mark
This special type of trademark designates protection for non-product items such as services. While commonly interchangeable in the vernacular, a service mark differentiates an organization's class of services from other similar providers. Examples include American Airlines, Hilton Hotels, and Meydan, to name a few.
Expert Insight: Because it is understandably harder to quantify as compared to products, service marks take a longer time to process, and usually involves more rigorous evidential requirements. However, it is not always necessary to register a service mark for it to enforce legal power. In fact, common-law service marks are honored in many courts, long as an expert firm represents the company.
2. Certification Mark
This mark is registered to ascertain adherence to local regulations. Contrary to the other types of trademarks, a Certification Mark is used by an authorized user, not the owner. Additionally, to create another layer of protection, these certification bodies are disallowed to award this mark for their own use, as stipulated by the "duty of neutrality."
3. Collective Mark
Collective Marks are special trademarks owned by organizations or associations. This mark appears to distinguish organizational origin. For instance, the Red Cross makes use of this kind of marking to separate its members and services from other similar organizations. Furthermore, it bars others from using their mark as they already carry a worldwide reputation and reliability.
4. Trade Dress
Trade dresses cover particular aesthetic aspects attributable to the packaging, interior, or exterior design. While closely related to the product, the protection covers the form in which the product appears.
Expert Insight: It is essential to note that trade dress protection only covers aesthetics and not necessarily functional aspects. If you wish to register a unique form with a specialized function, it would be best to consult a dedicated firm regarding patents.
5. Trade Name
Trade Names are used in identifying a company as a whole, instead of distinguishing a specific service or product. This is especially common among multinational corporations that host a variety of brands under their trade name. Proctor & Gamble is an excellent example of a trade name holding many trademarks such as Oral-B.
6. House Mark
Similar to the trade name, a house mark identifies the manufacturing company or corporation. However, the difference is that House Marks are placed alongside the specific product names to identify it as belonging to the company. To illustrate this point, we can take Toyota Corp. as an example. Releasing car models such as "Toyota Corolla" and "Toyota Camry" with their separate trade name included makes the models more identifiable.
7. Family of Marks
The Family of Marks acts the same way as the house marks. However, the main difference lies in its form. It does not necessarily call for a full name but makes use of abbreviations and initials. A popular example is the letter "i" from "iPhone," "iPad," and "iPod," among others. Similarly, "Mc" in "McFlurry," "McMuffin," and "McCafe" operates in the same logic.
Expert Insight: Brands worldwide compete to set their identity apart from the competition. And while this forces new roads to open in terms of inventiveness, it also crowds the market, making it a painstaking task to create something truly original. Knowing the specific registerable identifiers will not only place your brand in the public consciousness, but it would also grant legal rights to your identity. The following are particular marks you can utilize.
8. Sound Mark
Commonly known as a "jingle", a Sound Mark is a unique sound or melody that has proven recognition for the brand. McDonald's had their sound mark registered for the infuriatingly catchy sound playing in each of their TV commercials.
9. Pattern Mark
This type of mark, commonly found in the fashion industry, protects the specific way design is tiled into a canvass. Imagine Louis Vuitton and its famous pattern.
10. Position Mark
Delving into the more specific features of a brand's visuals, Position Mark identifies the exact positioning of a mark with respect to its surrounding elements. For instance, logos appearing on shoes are placed using the same proportions across the line of footwear. However, the positioning itself must be considered unique to the company.
11. Hologram Mark
With more advanced visual communication techniques, presenting a company logo may take contemporary forms. Hologram marks cover the three-dimensional picture shown in a holographic device.
12. Multimedia Mark
Multimedia marks are perhaps most commonly seen in film production houses and the television industry. It contains a visual sequence with accompanying sound elements. Take, for example, Netflix; they have a unique sound played alongside their logo animation in the opening billboard.
13. Motion Mark
Although closely related to the multimedia mark, motion marks are purely visual in nature. It may be an animated logo that plays either on loop or as a one-time clip.
Representing a whole company through words calls for rather stringent creative measures. To solve this problem, every aspect of its visual representation, including the types of fonts used and specific modifications, are protected by the Logotype.
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.
Remove the Question from the Mark
Identifying the specific kind of trademark suited for your company requires close study and expert advice. Furthermore, knowing the different ways your brand's identity is protected could give you more ideas if you are still in the creative process.
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.
Navigating the intricacies of trademark registration could be overwhelming and precarious without professional counsel. If you are looking for expert consultation to avoid costly errors in trademarks registration, just drop us a line at email@example.com or call us at +971 4 282 2677.
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.