The Trademark Spectrum Machine (TM):
ABOUT THE TSM
One of the bedrock foundations of trademark law is what is called the Trademark Spectrum of Distinctiveness. This rule classifies every potential word(s) trademark into one of several categories (designs require a different test). Depending on this classification, the potential trademark is either 1) Generic – never protectable; 2) Descriptive – protectable only with “secondary meaning” – sometimes referred to as “acquired distinctiveness”; or 3) Suggestive, Arbitrary, or Coined – protectable immediately upon use. Generic terms are product categories. Descriptive terms describe some aspect, quality, or ingredient. Suggestive terms require some imagination or a multi-step thought process to “get” what the relationship between the mark and the goods or services are. Arbitrary terms are existing words that have no relationship with the goods or service. Coined terms are invented words or letter/number combinations.
Here’s an easy way to think about the Spectrum:
APPLE IS GENERIC FOR APPLES
APPLE IS DESCRIPTIVE FOR APPLE SAUCES.
APPLE & EVE IS SUGGESTIVE FOR FRUIT JUICES
APPLE IS ARBITRARY FOR COMPUTERS AND PHONES
If you have a NEW trademark and you think it might be descriptive (it immediately describes some aspect, ingredient or quality of the product or service), I will be happy to figure out if it can be registered. Do not worry…with TrademarksA2® you will ALWAYS be able to choose another trademark at no additional cost if your trademark will not qualify for protection! Even if you have a descriptive trademark, if you have been using it for some time, there is a good chance that you have acquired distinctiveness and thus it is suitable for registration. Below are some examples of this spectrum from various product and service categories. I will add to this graphic on occasion so check back. If you have any questions or comments, I’d love to hear from you! Maybe you can come up with some of your own? Cheers.
*Merely descriptive, no secondary meaning (not a trademark)
** Descriptive, with secondary meaning (a trademark)
LONG ISLAND ICED TEA
Long Island Trademark Attorney
A Long Island trademark attorney is an attorney who specializes in trademark law and can serve the citizens of Long Island with streamlined and professional service. Long Island Trademark attorneys may work in corporations, law firms or in their own practices. The types of functions performed by a Long Island trademark attorney include filing and prosecuting trademark applications, conducting trademark searches and evaluating them, licensing trademarks, providing counsel on trademark use, providing trademark development strategy and trademark policies for large brand owners, trademark litigation, and many other task associated with acquiring or selling trademarks. A Long Island trademark attorney is sometimes also a patent attorney. Trademark attorneys do not require a special license, but they do benefit from experience. The work of a trademark attorney combines attention to detail and a very creative approach to problem solving and thinking about solutions to trademark issues. Trademark law is a very flexible, and market oriented, legal discipline, so it is important that a trademark attorney has a very good understanding of modern marketing techniques and an ability to think like a marketer. It is important for trademark attorneys to understand other areas of intellectual property law such as trademarks, patents, and copyrights. These legal disciplines often overlap. An understanding of how trademarks fit within the context of intellectual property law as a whole can be a very critical part of maximizing IP protection for your products and services.
If you are thinking about registering a trademark and you live or do business in Long Island, it is crucial that you consider the value in hiring a Long Island trademark attorney. It may seem that filing a trademark application is a very simple thing to do. There are many websites that make it appear as if a trademark application is a simple form that anyone can complete. This is far from the truth. Trademark registration is a deceptively complicated procedure with many potential pitfalls for the unwary. Hiring a Long Island trademark attorney is an investment that is well worth it in the long run.
A Long Island trademark attorney knows Long Island and can serve you with a local and personal touch. For a relatively low flat fee, you can maximize your chances of getting the trademark registration that is the ultimate goal when filing a trademark application. Only trademark attorneys know the nuances of trademark law that arise during the prosecution of a trademark application. The first thing a trademark attorney can do is evaluate the trademark search and decide how to draft your goods and services to avoid conflicts with existing trademarks. There are other issues that only an experienced trademark attorney can navigate, such as the description of a trademark, the parts of a trademark that can be registered, and the form of a trademark. Most importantly, a trademark attorney can respond to any office action that the USPTO trademark attorney (whose job it is to examine the trademark application and issue relevant refusals called office actions) may issue. In looking for a trademark attorney, you should find one who includes this type of work in the flat fee. In short, by hiring a trademark attorney, you are giving yourself the best opportunity to take your trademark from application to registration. A registration gives you the maximum legal benefits that are available for trademarks in the United States. Stay with the best, support your Long Island economy and go with the home team. Gene Bolmarcich, Esq. – a Long Island native, experienced trademark attorney and a fan of your favorite football and baseball teams (I’m not that stupid to actually say which ones!)
How To Trademark! (TM)
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