How to File a Trademark – Part 2

By Drew Stevens - October 1, 2018 - Technology & IP

Welcome to part two in our ongoing series that covers the high-level points of how to file a trademark. A key part of intellectual property protection for startups, mid-market businesses, and mature corporations, trademarks can be a valuable way to protect business branding. If you’ve never dealt with Columbus intellectual property lawyers, read on. In this post, we’ll tackle what you can trademark and categories of trademarks.

What Can You Trademark?

These days, there are a number of things you can trademark. Classic examples of trademarks include brand names, business names, slogans, or taglines. Depending on your presentation, these are generally classified as standard character marks when filing with the U.S. Patent and Trademark Office. For example, for a business name, you could file FlimmyFlammy and for a slogan you could file “Flex Solutions for Every Grade.”

Additionally, with the general development and rise of technology, there are a range of items a business can trademark, beyond just names and slogans. With a sound mark, you can file for voices, music, and noises. Famous examples of sounds marks include the Taco Bell gong, the Aflac duck, and Homer Simpson’s “D’oh!.” For Star Wars fans, both the sounds of the lightsaber and Darth Vader’s breathing are registered trademarks.

These are a variety of other items you can trademark, such as hologram and motion marks. Popular examples include American Express’ hologram on its credit cards and the motion of the Lamborghini doors. You can also trademark textures, tastes, smells, and domain names.

Categories of Trademarks

One of the keys in filing a good trademark application is being aware of the general categories of a mark. These categories include generic, descriptive, suggestive, arbitrary, and fanciful trademarks.

Best of luck getting a generic mark approved. A generic mark describes a product. For example, even if you make the world’s best barbecue sauce (please send us some), you will not get approval for a trademark application for “BBQ.”

Registering descriptive trademarks is an uphill battle, but they are possible to secure. One of the keys with a descriptive mark is showing that the mark has acquired secondary meaning. Successful examples include “Sharp” for TVs or “American Airlines” for air transportation. Be forewarned, filing a descriptive mark will likely earn you an office action. Corresponding, negotiating, and responding (and often times, pleading) with an USPTO examining attorney can be a surefire way to rack up legal fees and prolong the overall registration process.

Moving up the ladder in terms of both ease of filing and strength of a good application, suggestive marks are marks that do not directly describe the product or service but suggest a link between the product/services and the mark. Examples include Bowflex for exercise equipment and Coppertone for suntan lotion.

If you’re looking for an even easier and more straightforward trademark application, consider the arbitrary mark for your branding. The arbitrary mark consists of a real, normal word, but a word that is completely unrelated to the product or service. See Apple for computers and all things technology.

Finally, if you want perhaps the easiest of all trademark applications and want to really minimize your odds of a negative USPTO office action, you should strongly consider the fanciful mark. This mark is a made-up word and because of its distinctiveness, it is considered to be one of the strongest types of trademarks. Examples include Exxon and Tylenol.

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