(Page 3)

The Types of Trademarks and Other Considerations

The review of a trademark term is extremely important from the standpoint of its initial registration and lasting viability of the mark. When evaluating the term to be trademarked, the terms are placed in one of five general categories:

• Fanciful: Terms that did not exist prior. (For example ROLEX, KODAK, NavaCode, Accenture).
• Arbitrary: Terms in common language with no relationship to the product: CARNIVAL ® for Cruises, JUST DO IT for Nike Shoes, Big Blue for IBM.
• Suggestive: A term that merely suggests some quality or characteristic of the services. Suggestive marks are generally very weak, in that they often do not provide the owner with the ability to stop others from using marks that are very similar on similar goods, or even identical on different goods. Examples include SPROTSTICK ® for lip balm and GUNG-HO ® for marine action figure.
• Descriptive: A term that immediately conveys an ingredient, quality, characteristic, function, feature, purpose, or use of goods to which they are applied. Examples include "HEALTHY CHOICE" for nutritious products, "THIRST AID" for drinks, and "SUPER SOAKER" for water guns. They are entitled protection only if they have acquired secondary meaning e.g. when the public's reaction to a mark is to immediately link the mark with a single source or producer of the product, not just the product itself (determined by various factors such as length of time used, etc.).
• Generic Marks: A term where the meaning of which is synonymous with the goods (services) themselves. Such generic terms are incapable of distinguishing the goods or services of one entity from those of another (i.e. CHOCALATE FUDGE for soda). Generally these terms are not registerable.

Another important point to consider when you become a trademark holder is the "Use It or Lose It" rule. In the United States, an owner of a trademark has abandoned it if you do not use it in interstate commerce for three consecutive years. Also, it is important to remember that intellectual property has become an international right, and one who registers a trademark should consider other countries' laws or binding treaties.

In addition to filing a trademark registration one should consider:

• Filing a Business Process Patent if the process is unique,
• Filing a Copyright on any material that is published and gives an overview of the material, and
• Registering a domain name / website.
  

Though there are several online resources that will register your trademark, keep in mind that there are common law and jurisdictional issues to take into consideration. Also, as mentioned above, be sure that your term or phrase fits into the appropriate category, or you may lose one of the most important assets of your business: your identity.

(next page >> Answer to Our Trademark Case)