What makes a trademark

Below are some more detailed explanations of each category of mark. This type of mark is not actually considered a trademark. A generic word or phrase is so inherently descriptive of a product or service with which it is associated that it is ultimately incapable of ever functioning as a trademark. Generally speaking, generic words can be thought of as the typical or well-known name of the product or service in question. The reason for this is one of public policy.

If such generic words or phrases were registerable, then the words or phrases would become unavailable for the public to use to describe the items. Note, if trademarks are improperly used they may be at risk of becoming generic. The mark was used incorrectly and repeatedly as a noun, and Otis ultimately lost the rights to claim it as a trademark.

This type of mark is one that companies often think of initially when trying to identify a new trademark for a product or service, but ultimately, is too weak to be considered a trademark under common law, and is difficult or virtually impossible to register. The word or phrase inherently describes a feature or characteristic of the goods or services.

Such descriptive marks may be rejected outright by the Trademark Office. However, in some instances, various forms of evidence can overcome such a rejection.

For example, the applicant can attempt to claim acquired distinctiveness as to the mark, e. Included in this category are marks that are geographically descriptive, such as the name of the town in which the business operates. A lot of companies are named after first names or surnames of, for example, the founders of the company. Names, especially surnames, are actually relatively difficult to register as trademarks because the Trademark Office is hesitant to give one individual or entity the right to use the surname mark exclusively for certain goods or services.

There may be a lot of other individuals in the country with the same surname who would also want to be able to operate a business selling goods or services with their surname. As such, there are a lot of companies and brands that are surname based, but unless the brand can acquire secondary meaning through extensive use, such as for more than 5 years or if the surname is particularly rare , it can be quite difficult to convince the Trademark Office to register the marks.

Therefore, personal names do not make for very strong trademarks. A suggestive mark provides some hint or suggestion as to the product or service without actually describing the product or service. Frequently, companies believe that a suggestive mark would make the best trademark. However, fanciful, coined, and arbitrary marks are actually stronger.

An advantage to suggestive marks is that they may provide some instant inherent element of sales appeal and they may not require as much education of the consumer as arbitrary, fanciful, or coined marks.

A disadvantage to suggestive marks is that they may be entitled to less-extensive and weaker protection than arbitrary, fanciful, or coined marks because there is a higher likelihood that someone else may be using a same or similar trademark suggesting the same or similar goods e. The second strongest type mark is one that is formed of a word or words that have a common meaning, but that are used in a way that is otherwise not logically connected with the product or service.

Because arbitrary marks are formed of words that consumers may already associate with another thing according to their dictionary definition there is, as with fanciful or coined, some education of the consumer required to develop the association between the mark and the product or service. Arbitrary marks also typically receive broad and strong trademark protection as well because they typically are not used by others on such completely disconnected goods or services relative to the traditional meaning of the word or phrase.

The strongest trademark is one that is completely made up, coined, or fanciful, because it is inherently distinctive having never existed before it was created to be a trademark. Sometimes such marks are combinations of portions of other words, and sometimes there is no meaning or logic underlying them at all.

If you are in the market for a new trademark, a fanciful or coined mark should be your goal from the perspective of trademark law because it is typically the easiest to register and receives the broadest and strongest forms of protection. A complete review includes a search for conflicting marks and an examination of the written application, the drawing, and any specimen. If the examining attorney determines that a mark should not be registered, the examining attorney will issue a letter office action to you explaining any substantive reasons for refusal , and any technical or procedural deficiencies in the application.

If only minor corrections are required, the examining attorney may contact you by telephone or email. If the examining attorney sends you an office action, you, or your attorney, if you have one, must submit a response to the office action that is received by the USPTO within six months of the issue date of the office action, or the application will be declared abandoned. Watch the Response to Office Action video for more information about how to respond to an office action.

Watch the Petitions to revive video for more information about how to revive an abandoned application. If the examining attorney raises no objections to registration, or if you overcome all objections, the examining attorney will approve the mark for publication in the "Official Gazette," a weekly publication of the USPTO.

After the mark is published in the "Official Gazette," any party who believes it may be damaged by registration of the mark has 30 days from the publication date to file either an opposition to registration or a request to extend the time to oppose.

If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. It can take three to four months from the time the notice of publication is sent before the applicant will receive official notice of the next status of the application.

During this time, you should continue to monitor the status of your application through the TSDR system as explained above in Step 3. If the mark is based on use in commerce, a foreign registration, or an extension of protection of an international registration to the United States under Section 66 a , and no party files an opposition or request to extend the time to oppose, the USPTO will register the mark and send the owner a certificate of registration.

After the mark registers, the owner of the mark must file specific maintenance documents to keep the registration live. If the mark is published based upon the applicant's bona fide intention to use the mark in commerce and no party files either an opposition or request to extend the time to oppose, the USPTO will issue a notice of allowance about eight weeks after the date the mark was published.

The applicant then has six months from the date of the notice of allowance to either:. A notice of allowance is a written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed; it does not mean that the mark has registered yet.

Receiving a notice of allowance is another step on the way to registration. Notices of allowance are only issued for applications that have a filing basis of intent to use a mark in commerce under Trademark Act Section 1 b. The applicant has six months from the mailing date of the notice of allowance in which to either file a statement of use SOU or file an extension request. More than one extension request may be filed, but a limit exists on the total number of extension requests permitted and the timeframe that they must be submitted within.

Please review the additional information for the SOU use and extension request processes. Watch the Statement of Use video for more information about submitting a statement of use. To continue the application process, the applicant must file a petition to revive the application within two months of the abandonment date. Watch the Petitions video for more information about how to revive an abandoned application.

A statement of use SOU must meet minimum filing requirements before an examining attorney fully reviews it. If the SOU does meet the minimum filing requirements, then the examining attorney reviews it to determine whether it is acceptable to permit registration.

Submission of an SOU does not guarantee registration. If no refusals or additional requirements are identified, the examining attorney approves the SOU. This is the same process that occurs prior to publication of the mark if the examining attorney determines that legal requirements must be met.

The process and timeframes remain the same, except that if issues are ultimately resolved and the statement of use is approved, the USPTO issues a registration within approximately two months. If all issues are not resolved, the application will abandon. If your response does not overcome all objections, the examining attorney will issue a final refusal office action.

If you disagree with the final refusal, you may, for an additional fee, appeal the decision to the TTAB. To keep the registration "live," the registrant must file specific maintenance documents. If your registration is cancelled or expired, your only option is to file a brand new application and begin the entire process again from the very beginning. Every time you use your trademark, you can use a symbol with it. You may use the registration symbol anywhere around the trademark, although most trademark owners use the symbol in a superscript or subscript manner to the right of the trademark.

You may only use the registration symbol with the trademark for the goods or services listed in the federal trademark registration. For other assistance, please see our contact us page. What is a trademark?

A trademark: Identifies the source of your goods or services. Provides legal protection for your brand. Helps you guard against counterfeiting and fraud.