Types of Trademarks: Everything You Need to KnowTrademark Law ResourcesTypes of TrademarksHow To Register A Trademark
Types of trademarks include 7 main categories: generic mark, descriptive mark, suggestive mark, fanciful mark, arbitrary mark, service mark, and trade dress.7 min read
2. Why Are Types of Trademarks Important?
3. Reasons to Consider Using Types of Trademarks
5. What Could Happen When You Don't Understand the Types of Trademarks?
6. Common Mistakes
7. Frequently Asked Questions
8. Steps to File
Updated June 26, 2020:
What are Types of Trademarks?
A trademark offers legal protection for a word, symbol, phrase, logo, design, or combination of those that represents a source of goods or services. Types of trademarks for products include five main categories: generic mark, descriptive mark, suggestive mark, fanciful, and arbitrary mark.
- A generic trademark actually doesn't qualify for a trademark unless it includes more specific detail. One example of a generic mark is the phrase, "The Ice Cream Shop." Offering trademark protection on something this generic would restrict all other shops that sell ice cream.
- To qualify a generic mark for a trademark, it needs to describe qualities, characteristics, or ingredients of the good your business sells.
- A descriptive mark identifies one or more characteristics of a prodct or service and only serves to describe the product. It has unique elements that qualify it for protection under trademark laws such as it must have secondary meaning such as amount and manner of advertising, volume of sales, length and manner of the mark's use, or results of consumer surveys to qualify. This means that consumers must recognize the mark and identify it with the brand.
- To qualify as a descriptive mark, it should evolve from what the brand represents to who the brand represents.
- A suggestive mark implies something about the good or service. A mark in this category typically qualifies for protection without requiring a secondary meaning.
- The term "suggestive" means that the customer must use the imagination to figure out what services or goods the company offers. One example is the luxury automotive brand, Jaguar. It suggests speed and agility, but doesn't immediately convey a car manufacturer.
- A fanciful mark is a term, name, or logo that is different from anything else that exists. This category is the easiest for obtaining trademark protection because it typically doesn't compete with anything else or become too generic.
- Examples of fanciful marks include Kodak, Nike, and Adidas. These words don't hold any meaning in common language, so trademarking them doesn't infringe on the rights of other companies that offer similar products.
- An arbitrary mark might include a term or phrase with a well-known meaning, but the meaning in its case is different. The best example of an arbitrary mark is Apple, the computer and electronics manufacturer. An apple is a familiar term, but in this case, the mark doesn't have anything to do with the general meaning of the term.
For companies that offer services:
- A service mark is the same as a trademark, but it distinguishes a company that provides services instead of products. A servce mark still falls under the legal trademark laws and must be registered with the USPTO.
- A common example of a service mark would be the "McDonald's" service mark since it is used to represent the services provided.
An additional form of legal protection for distinguishing businesses is:
- A trade dress includes identifying features of a product or company such as packaging elements, décor items, and other similar concepts. Product features don't usually fall under a type of trademark for legal protection, but instead under trade dress protection. If a consumer identifies a specific feature or features with a brand or company instead of the actual product, the case for trade dress protection is strong.
- One example of trade dress is the bottle of Listerine mouthwash. The unique flat shape of the bottle is easily identifiable to customers looking for Listerine, so it qualified for protection, which restricts others from producing a confusingly similar bottle design.
Why Are Types of Trademarks Important?
When applying for trademark protection, it's important to understand the differences between each type. If your phrase, word, symbol, or logo is too generic, it will be difficult to qualify for legal protection. It may be worthwhile to consider modifying your mark so that it more easily qualifies.
A trademark allows consumers to easily identify the source of goods or services so that there is trademark distinctiveness. Before trademark laws became more regulated, there was confusion in the marketplace. Consumers couldn't immediately recognize the provider of services or goods, so it was difficult to achieve brand loyalty.
The Lanham Act, signed into law in 1945, helped offer more protection under trademarks issued in the United States. When a business or individual receives approval on a trademark application, it comes with legal rights and protection. The trademark only allows the owner to copy, produce, profit from, and use the mark. A trademark holder can take legal action against someone who infringes on the trademark in federal court.
Infringement occurs when someone else uses a similar mark that will cause confusion. If neither party holds a trademark on the mark, it is difficult to prove who used it first. Thus, business owners should file an application for a trademark as soon as possible to prevent losing the opportunity to do so.
Reasons to Consider Using Types of Trademarks
Before filing an application for a trademark, assess your mark and determine what category is most appropriate. If you aren't sure whether your mark is too generic, talk to a lawyer with experience in trademark laws. It's best to find out that your mark is too generic before you spend time and money filing an application with the United States Patent and Trademark Office (USPTO).
Understanding the different types will also help you know whether you need to make changes to your mark before applying for a trademark.
There is no firm deadline to file for any type of trademark. You can start using a mark before you receive approval on an application or even if you don't plan to register the mark. Some companies use TM and SM symbols on their marks before finalizing the registration process.
TM and SM symbols don't hold any legal significance, but stake claim on a mark. When a competitor sees the mark on your product, packaging, or other materials, it raises awareness that you plan to use that mark to represent your company.
After you receive approval on your mark, you can start using the registered symbol. There are legal restrictions about using this symbol, so only use it after you have an approved application.
Although there isn't a deadline for filing a trademark, it makes sense to act quickly once you finalize your design, phrase, symbol, logo, or word that will represent your business. The filing date will become important if someone else files an application for a similar mark.
What Could Happen When You Don't Understand the Types of Trademarks?
If you file for trademark protection with a generic mark, you'll waste time and money because it won't receive approval. It's best to fully understand each type so you can choose one that is likely to qualify for protection under trademark laws.
One common mistake made by business owners is assuming that registering the trade name protects the mark associated with your company. The two are completely separate, governed by different legal entities. Most state-issued business registrations don't offer protection from someone else using a similar or identical name. If you want to prevent other people or companies from using your business name, you'll have to apply for a trademark.
When you register your company's domain name, this process does not qualify you for trademark protection. It actually could infringe on another trademark if you haven't reviewed the database of registered marks with the USPTO. If your domain name does infringe, you might have to surrender it to the owner.
Neither ornamental design elements nor functionality can be trademarked. To protect unique design elements of a product of manufacture, you'll need to apply for a design patent. Functional aspects or construction of a product are covered under a utility patent.
Frequently Asked Questions
- What are the differences between the types of trademarks?
The categories of trademarks designate how unique the mark is and how much protection it offers in legal situations. Other trademark types include certification marks, collective membership marks, and collective trademarks.
Certification marks identify which authority provides certification of goods, while collective membership marks are for members of an organization, collective, or association. This type of trademark shows the membership of each person and distinguishes the services or products from those who don't belong to the group. Collective trademarks offer protection for a group of people who own the symbol, logo, design, phrase, or word together.
Steps to File
- The first step in filing for a trademark is looking through the Trademark Electronic Search System (TESS) to review existing trademarks. If yours is similar to anything that already holds a trademark, it likely won't receive approval.
- Continuing to use a mark that is similar to something in the search system could put you at risk for legal troubles. The trademark holder can legally sue you for infringement.
- If your mark doesn't seem to infringe on anything in the TESS, determine the best category for your trademark. This will provide a better idea of the level of protection and likelihood of approval.
- Next, complete the trademark application. Include all required documentation along with an image or layout of the mark as you plan to use it. If your mark includes any color, it's smart to submit both a color and black and white version.
- While you wait for approval from the USPTO, which takes around 6-16 months, you can check the status on the trademark database.
Choosing a mark that is unique and descriptive of your products and/or services will offer the best legal protection. Generic marks rarely qualify for trademarks, so make it stand out before submitting your trademark application. When you understand the types of trademarks, you can make sure to file for one that will get approval and generate awareness about your brand.
If you need help with types of trademarks, you can post your question or concern on UpCounsel's marketplace. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.