How to describe trademark [FAQ]

Last updated : Sept 9, 2022

What is a descriptive trademark example?

A descriptive trademark is a word that identifies the characteristics of the product or service to which the mark pertains. It is similar to an adjective. An example would be “deep bowl”. If that's the mark you used to describe a spoon with a deep bowl for scooping, it is what's known as a descriptive trademark.

Which is a good example of a trademark?

The McDonald's® golden arches design is an example of a registered trademark in special form format. The company Nike registered this trademark in special form format, combining the stylized word Nike® with their swoosh logo.

What does descriptive trademark mean?

In general, a descriptive mark is a word (or words) that merely describes a product or its ingredient, quality, characteristic, function, feature, purpose or use. An example of a merely descriptive mark would be COLD AND CREAMY for ice cream. Marks of this type are generally not granted trademark protection.

What are the characteristics of trademark?

A trademark must be a mark which includes a device, heading, brand, label, ticket, signature, word, letter, name, numeral, packaging or combination of colors or any combination of the above attributes. It should be easy to speak and spell. A good trademark is such that the public can easily spell and speak.

What makes a strong trademark?

Strong trademarks are typically creative or unique, setting you apart from your competitors. These trademarks include fanciful, arbitrary, or suggestive trademarks. Fanciful trademarks are invented words. They only have meaning in relation to their goods or services.

Should trademarks be descriptive?

The simple answer to this is no. The Indian Trademark Act, 1999, does not allow descriptive words to be registered as a trademark. Section 9(1)(b) of the Act prohibits descriptive trademarks.

Why is it important to trademark?

Trademarking Protects Your Brand Intellectual property laws exist so competitors cannot steal creative ideas, names, or symbols from other businesses. Trademarking is just good business – it's easy and ensures that other businesses aren't piggybacking off of your hard work and brand building.

What are the 3 types of trademarks?

What you'll learn: Arbitrary and Fanciful Trademarks. Suggestive Trademarks. Descriptive Trademarks.

What are 4 examples of trademarks?

• Brand names like Apple, McDonald's, and Dolce & Gabbana.
• Product names like iPod and Big Mac.
• Company logos like the golden arches at McDonald's and NBC's peacock logo.
• Slogans like Capital One's "What's in your wallet?" and McDonald's "I'm lovin' it"

Why can't a trademark be descriptive?

Descriptive marks are difficult to register as trademarks because they only describe the characteristics of the products or services that are being offered. It is better to use a mark that is suggestive, arbitrary or fanciful so that it can be registered.

How do you choose a strong trademark?

1. Avoid trademarks that cannot be registered.
2. Strength of the trademark matters.
3. Choose words that are fanciful or arbitrary.
4. Avoid descriptive and generic words.
5. Avoid surnames.
6. Avoid words that will cause consumers to be confused with another trademark.
7. Avoid three letter acronyms and numbers.

What are the types of trademark?

• Product Mark. Product mark is a mark that is used on a good or on a product rather than on a service.
• Service Mark. Service mark is similar to the product mark but a service mark is used to represent a service rather than a product.
• Collective Mark.
• Certification Mark.
• Shape Mark.
• Pattern Mark.
• Sound Mark.

What do trademarks protect?

A trademark typically protects brand names and logos used on goods and services. A copyright protects an original artistic or literary work. A patent protects an invention. For example, if you invent a new kind of vacuum cleaner, you would apply for a patent to protect the invention itself.

Can you trademark descriptive names?

Marks that are merely descriptive are not protected or accorded trademark rights. This is because they do not identify and distinguish the source of products or services. Marks that are mis-descriptive are also not protected.

Can you register a descriptive trademark?

It is generally not possible to get exclusive rights to a descriptive name. If the trademark is descriptive, it is not distinctive and cannot be registered (unless it has acquired distinctiveness through use).

How do trademarks protect a business?

A trademark prevents anyone else from selling similar goods and services within the United States under that business name. The primary purpose of trademarks is to prevent confusion in the marketplace, so the protection applies to only a particular category of goods and services.

What is the value of a trademark?

The value of a trademark lies in the goodwill associated with that trademark. Goodwill is an intangible asset that is part of the value of the trademark owner's business. It can be quite difficult to assign a monetary value to goodwill because many variables must be considered.

Why do you trademark a name?

Names hold power in business. So establishing ownership of and rights to a business name is an important step for businesses that want to ensure a name remains one-of-a-kind. Registering a trademark helps protect a name or brand from intellectual property theft or misuse as a business grows.

How do you overcome a merely descriptive trademark?

To overcome a §2(e)(1) refusal (i.e., a descriptiveness refusal), a trademark applicant can either (1) submit arguments and evidence to show that the mark is distinct, (2) amend the application to seek registration on the Supplemental Register, or (3) demonstrate that the mark has acquired distinctiveness.

How do you prove a mark is distinctive?

Generally three conditions must be satisfied to show distinctiveness: (1) the mark and the product are associated or linked; (2) the owner uses the association or link between the mark and its product and is selling the product; (3) the association or link enables the owner of the mark to distinguish its product from ...

Check these related keywords for more interesting articles :
Can you copyright stage name
Trademark keyword search
Intellectual property meaning and its importance
Do you have to trademark your brand
How to copyright a name australia
Intellectual property jobs belfast
How to protect a new app idea
Trademark registration in monaco
Is there a trademark database
How to avoid copyright infringement music
What is intellectual property agent
Intellectual property law book
How to rip copyright protected dvds with handbrake
How to filing provisional patent application
Registered trademark and logo

Write a comment

hi everybody trademark attorney Josh gurbin and I'd like to talk a little bit about how to list your goods and services in a trademark application so one of the most critical questions in a trademark application is what are the goods and services associated with your trademark that you would like to protect and this question is so critical because it sets the right and scope for your trademark protection now a lot of people will say oh I just want to protect my trademark for everything I don't want anybody else to use my name that is just not how US trademark law works though so trademark law protects your name logo slogan your trademark as it relates to the goods or services that you provide you can have a monopoly for that but not for everything so for example you have Delta Airlines and Delta faucets right one is an airline company one's a Fossett maker you have Dove soap tub chocolate ones a chocolate maker one's a soap company so even these large companies have to share their name and you may have to share your name as well but you can expect the rights to extend to whatever you're offering and this is why when you're drafting that particular language for the trademark application you have to pay a lot of attention and you have to get it right so let's take a look at the trademark application itself here is the page where you would put in the goods or services that you're offering or plan to offer under your trademark and you can see there's a lot of text here right the USPTO has a ton of instructions and that's because this is a hyper technical part of the application that is extremely important to get right so this can be an incredibly difficult part of a trademark application to get correct here are three tips that I use to try to get the best language for any given client into their application the first is we have to start by listing the products or services you plan to offer in layman's terms this means stripping out all marketing language industry lingo and just being able to write down on a piece of paper what it is you're going to offer so if it's a clothing brand are you going to offer shirts and hats if it's jewelry will you be offering necklaces and bracelets it gets a little bit more complicated if you're offering a software program what does the software program do what are the functionalities of the software program if you're going to offer a medical service what kind of medical service so just being able to write out and understand in layman's terms the goods and services you're going to offer is an extremely important step and surprisingly difficult for a lot of companies to complete now the second rule when thinking about the goods and services you would like to include in a trademark application is to be realistic and not aspirational before a trademark registers all of the goods and services listed in the application must be actively being sold in commerce meaning you actually have to have customers or clients for this stuff so if you pack your trademark application full of hundreds of products or all these different services that someday you plan to offer that application cannot mature into a registration until you actually offer everything you've listed so it just doesn't make sense to come in there and list things that maybe someday you're going to do you really want to focus on things that are within one to a three year time frame at the most because we just don't want an application first off an application can't sit there for more than really three years they will just actually cancel out your application if you don't have sales but you can keep an application active for about three years after the initial filing so you can include things you think are going to be close in the pipeline right but you don't want to be everywhere and just throwing in things because you think someday it's a good idea be very realistic about the goods or services you're going to offer and my third and final tip is to understand that the USPTO has certain language that it will accept on how you can identify the products or services that you're going to offer and you can't just make this language up you have to meet the technical requirements that the USPTO has so you need to understand what those requirements are or you need to hire somebody that does like a trademark attorney right so I do see a lot of clients come to me and they have these marketing statements right and they're saying this is what we want to go in the application because this describes our services but getting back to my first point it really doesn't it's just marketing and industry lingo we need to use technical language that very clearly identifies what the products or services are and that language has been there's basically an entire manual of this language that the USPTO has put out that you can choose from so when you look at the manual you can go in there and you can type in certain keywords and try to find language that the PTO will accept you don't a hundred percent have to stick to this language you are allowed to create custom language but it all has to fit within certain guidelines and if it doesn't you'll receive an office action or potentially denial of your trademark application so just incredibly important to know that there's very significant technical requirements with the language that you can use in a trademark application to describe your goods and services alright so there you have it some tips on how to think about the language that you're using to describe the goods and services that go into your trademark application I know it's not the funnest topic in the world but this is critical it sets the rights and the scope for the protection you're going to receive on your brand so please pay a lot of attention to it when you're filing a trademark application I hope you found this helpful and I'll talk to you next time you

Thanks for your comment Cliff Mcrary, have a nice day.
- Martin Lepe, Staff Member

hi i'm stan muller this is crash course intellectual property and today we're talking about trademarks trademarks are everywhere and they can often be confusing so today we're going to talk about why just about everything seems to be trademarked and why trademarks are good for business mr mueller trademarks don't intersect with my life so i really don't see why we need to cover this one it's mueller and two just watch the video a trademark is any word name symbol or device used to identify and distinguish goods from those manufactured or sold by others and to indicate the source of the goods even if that source is unknown this bit about unknown sources means that you as a consumer don't usually know the person or factory that actually made the goods you buy before the industrial revolution you often knew exactly who was making your stuff and how it was made if you wanted a hammer you went to the blacksmith and you knew his name it was probably smith these days brand names assure you that you're buying the same product say toilet paper that you bought last time you went shopping you know like the stuff with the ripples seriously though getting the wrong medication because of brand name confusion or counterfeiting could be disastrous the rationale for granting legal protection for trademarks is that they're a type of property it demonstrates to the purchasing public a standard of quality and embodies the goodwill and advertising investment of its owner in other words companies expend a tremendous amount of resources to develop the product market it to customers and provide customer support and back up their product with warranties at its core trademark law functions as a consumer protection measure it prevents consumer confusion and makes it easier for consumers to select and purchase the goods and services they want for example if you go shopping for a new television you don't have to sift through dozens of products that are confusingly similar to samsung knockoffs like samsung or wamsung or sony you want the samsung maybe based on past experience or the company's reputation or even a funny ad because the law protects the manufacturer's use of the trademark you can be reasonably sure that the tv you're picking up at best buy is the tv you saw the verge reporters freaking out about at ces though trademarks are often classified as intellectual property the supreme court held in the 1879 trademark cases that congress has no power to protect or regulate trademarks under the intellectual property clause of the constitution which as you'll recall provides congress with the authority to regulate and protect copyrights and patents but this didn't stop congress from regulating trademarks they used the commerce clause of the constitution which gives them the power to regulate commerce with foreign nations and among the several states and with the indian tribes beyond trademarks there are also service marks which are very similar in that they distinguish one particular service an example of a service mark is that roaring lion at the beginning of mgm movies it's registered for motion picture production or something trade dress or product packaging is protected if it's distinctive and non-functional like the shape of a nutter butter cookie is protected trade dress what they ought to trademark is the smell some people have registered smells and we'll get to that in a minute trademarks are symbols and since human beings might use as a symbol or device almost anything that is capable of carrying meaning just about any conceivable thing can function as a trademark trademarks can be words like craft or lego logos designs like the nike swoosh aromas like there's a brand of oil for race cars that smells like cherries sounds like bong bong bong or bada or bada papa even though is a registered trademark you can register colors like ups brown or home depot orange or tiffany blue or john deere green personal names like taylor swift t swizzy's name is registered for 61 different goods and services from shoes to christmas tree ornaments even containers like the coca-cola bottle or this perfume bottle shaped like a human skull can be registered in short they can be almost anything that distinguishes the product from others and which signifies the source of the goods despite the breadth of potential trademark subject matter there are some limits on what can be a valid trademark recently a restaurant in texas asserted trademark rights in the flavor of its pizza one of the restaurant's former employees allegedly stole the recipe and opened up a competing pizza joint selling pizzas that tasted a lot like those made by his former employer the judge rejected the claim and dismissed the case finding that it is unlikely that flavors can ever be inherently distinctive because they do not automatically suggest a product source also functional product features are not protectable under trademark law pizza has only one function that's to taste delicious so there are three requirements for trademarks we just discussed the first one that a trademark has to be a symbol or device that a court or the patent and trademark office deems to qualify the second requirement is that the mark has to be used in interstate commerce and the third is that it has to identify the mark owner's goods and distinguish them from those manufactured or sold by others it has to be distinctive let's talk about trademarks and what makes them distinctive in the thought window quartz rank trademark distinctiveness along a spectrum ranging from unprotectable to highly protectable at the bottom end of the spectrum is generic generic names refer to stuff like using the word orange for the fruit or dog for the canine or cheese for cheese descriptive terms simply describe the goods and convey an immediate idea of what the product is such as break and bake for scored cookie dough suggestive marks require some imagination or perception to link them to the goods like chic for middle eastern food or fruit loops for a circular fruit flavored breakfast cereal arbitrary marks are common words used in unexpected ways apple for computers or amazon for book sales or shelf for gasoline the most distinctive marks are usually made up words fanciful marks are non-dictionary words such as google for an internet search engine or clorox for bleach or kodak for film fanciful arbitrary and suggestive marks receive automatic protection upon use because they're considered to be inherently distinctive so the owner of the break and bake mark has to show that consumers identify the product with nabisco or pillsbury or whoever makes the product i honestly don't know who makes it which isn't a good sign as to whether it's acquired secondary meaning generic terms are never entitled to protection this becomes important when trademarks are gradually assimilated into the language as common names through a process sometimes called generocide the public comes to view such names as referring to the products themselves rather than as distinguishing the source of the products as a result the name loses its protection words like escalators cel

Thanks Jacinta your participation is very much appreciated
- Martin Lepe

About the author

Martin Lepe

I've studied ethnomusicology at Belhaven University in Jackson and I am an expert in beekeeping (apiculture). I usually feel giddy. My previous job was able seamen I held this position for 20 years, I love talking about webtooning and refurbishing furniture. Huge fan of Kelsey Grammer I practice archery and collect non-sports trading cards.