Trademark 101, Part 2
This is the second in a two-part series about trademarking the name of your business and the services it offers or products it produces. The first installment covered what you need to know before you settle on a name, design your logo and go to market. This second installment covers the different kinds of federally registered trademarks.
When it comes to trademarks, there are a few different ways to protect your business, products and service and hopefully eliminate or mitigate any confusion in the marketplace. Owning a federally registered mark means no other company anywhere in the U.S. can use your name or design, or one that is similar to it, to sell products related to yours.
Having a registered trademark can also help your brand in some scenarios that could play out internationally or in a courtroom.
Definitions are important, so let’s start there. Here is the entry of `trademark’ from Black’s Law Dictionary (11th ed. 2019):
trademark n. (1838) 1. A word, phrase, logo, or other sensory symbol used by a manufacturer or seller to distinguish its products or services from those of others. • The main purpose of a trademark is to designate the source of goods or services. In effect, the trademark is the commercial substitute for one's signature. To receive federal protection, a trademark must be (1) distinctive rather than merely descriptive or generic; (2) affixed to a product that is actually sold in the marketplace; and (3) registered with the U.S. Patent and Trademark Office. In its broadest sense, the term trademark includes a servicemark. Unregistered trademarks are protected under common-law only, and distinguished with the mark “TM.”
Here’s more about two main types of federally registered trademarks.
1. Word Marks
Word marks protect the words you use to identify, describe and market your business and the services it provides or products it sells. You could want to trademark things like the company name itself or its subsidiaries or a line of products or services or a tagline – or all of these things.
It’s that simple – and also not that simple.
A lot of times people use the word “trademark” in all of these instances. Word marks are trademarks if they protect a product. Example of a trademarked company with a trademarked catch-phrase: Nike and its “Just do it” slogan.
But if it’s a service you want to protect, then the type of word mark you need is actually a service mark. Examples of service marks: H&R Block, McDonald’s and Google. Fun fact about that last one: A federal appeals court in 2017 ruled that Google retained trademark protection for its name despite the fact that many people use “google” in the generic sense, as a verb for searching the internet.
When you have a unique company or product name – or a tagline that you use to describe and market your company, you want to protect it my registering it with the U.S. Patent and Trademark Office. This lets you put the ® symbol next to that name or phrase. Before registration is complete, companies can signal their intention to protect their trademark or service mark by putting the superscript TM or SM next to it.
2. Design mark
A design mark is used to register a brand’s logo, design, graphic or other piece of artwork. Think of the Golden Arches that represent McDonald’s all over the globe. Think of Nike’s Swoosh. Think of the green and white nautical figure emblazoned on Starbucks cups. Design marks are literally everywhere in our consumer world.
Design marks protect companies designs – the stylized letters, words and numbers it uses in its logo or other artwork. It can protect a company’s brand name if it is included in the design. Think of the FedEx logo, seemingly simple at first – and then you see the forward arrow formed in the negative space between the upper-case ‘E’ and lower-case ‘x.’
Design marks protect only the exact design that a company originally filed for registration – and this is one reason why word marks offer broader protection than design marks. If your registered design mark was for a color mark using green and yellow logo, and you want to switch it up with red and purple, chances are you will have to refile for protection of that design. Even more subtle tweaks could mean having to refile for protection of your design.
Closing thought: Trademark law is complex. And there are lots of considerations and potential pitfalls. Take this Trademark 101 for what it is – and introduction to protecting your company’s brand names, phrases and logos and an invitation to contact a business lawyer experienced in trademark law to do the heavy lifting.