EXAMPLE: Coca-Cola^® is one of the registered trademarks used by the Coca Cola Company to identify one of its beverage products.

EXAMPLE: UNITED AIRLINES^® is a service mark used to identify an airplane transportation service.

CERTIFICATION MARKS are the marks given by one group to certify that the goods and/or services of an unrelated group have met a certain predetermined standard.

EXAMPLE: The GOOD HOUSEKEEPING SEAL OF APPROVAL^® is a certification mark given to the manufacturers of household products that have a high level of quality.

EXAMPLE: The NEW YORK SEAL OF APPROVAL^® is a collective mark that can only be used by produce farmers located in the state of New York.

As has been previously mentioned, trademarks, service marks and other marks are used by businesses to identify themselves as the manufacturer of their products or the provider of their services and therefore distinguish their products and services from the products and services of their competitors. In the United States, companies spend billions of dollars each year establishing, promoting and protecting their trademarks. Since trademarks are used to identify a business, a good general rule in determining what terms can be used as a trademark is to place the word "BRAND" after the desired term and before the generic name of the product the term is being used to identify. If an average person would recognize the sentence as identifying the business along with the product, then the term chosen can be used as a trademark. For example, consider the following examples:

1.) KLEENEX "brand" facial tissue.

        Facial tissue is the product and KLEENEX identifies the manufacturer of the facial tissue.

2.) CABBAGE PATCH KID "brand" toy dolls.

        Dolls are the product and CABBAGE PATCH KID identifies the manufacturer of the dolls.

3.) CREST "brand" toothpaste.

        Toothpaste is the product being manufactured by CREST.

As can be seen by these examples, the chosen trademark clearly identifies a single manufacturer of each product in such a manner that no person can confuse the origin of the product.

With few exceptions, almost anything that uniquely identifies the manufacturer of a product or identifies the provider of a service can be registered as a trademark or a service mark. Below are some examples of the most common types of marks used.

1. COMPANY NAME.

Trademarks can be your company's name, such as I.B.M., Toyota, or Macy's.

2. SLOGANS

Trademarks can be a slogan or a phrase such as "Pepsi, the choice of a new generation"^®, "Maxwell House. Good to the last drop."^®

3. SYMBOLS

Trademarks can be symbols such as to identify Chrysler Motor Corporation or to identify Mercedes Benz.

4. SHAPES

Unusual shapes can become trademarks as long as that shape is not important to the function of the product. For example, the front grill of a Rolls Royce automobile is a registered trademark as is the shape of the old fashioned Coke-A-Cola glass bottles.

5. CHARACTERS

Mickey Mouse, the Pillsbury Dough Boy, and Ronald McDonald are all registered marks identifying the products and services of corporations.

6. COLORS

A color can become a trademark if it has no useful function. For example, the color pink is a registered trademark for Owens-Corning Fiberglass Insulation. Since pink does not add to the function of insulation, the trademark is valid and no other company can manufacture pink insulation. However, if the color serves any useful purpose, then you cannot use it as a trademark. For example, the color pink was rejected as a trademark for Pepto Bismol because pink has a psychological soothing effect on people who view it. Since Pepto Bismol is used to sooth upset stomachs, the pink color was determined to have a useful function.

Since trademarks and other registered marks give the exclusive legal rights to use a word, symbol, phrase or design to one business, trademarks are not granted lightly. Many rules and regulations apply to the registering of a trademark. Below are some types of marks that cannot be registered.

1. MERELY ORNAMENTAL DESIGNS

Many products have decorative designs placed upon them to enhance the ornamental appeal of that product. If the purpose of the design is merely to improve the visual appeal of the product as opposed to identifying the manufacturer of the product, then a trademark cannot be obtained.

Example: A knife manufacturer sells knives with a fancy design carved in the handle. If the design is not meant to identify the manufacturer of the knife (i.e. each knife handle is slightly different) then it cannot become a trademark.

2. IMMORAL OR SCANDALOUS MARKS

Such marks are prohibited by law. The determination of what mark constitutes an immoral or scandalous mark is made by the United States Patent and Trademark Office.

Example: Use your imagination.

3. DECEPTIVE MARKS.

Marks that misrepresent a product to the public are not allowed.

Example: SOFT LEATHER brand shoes would not be an acceptable trademark for a company that manufactured imitation leather shoes.

4. FLAGS

Any flag, coat of arms, or another insignia used by any governmental entity of this or another country cannot be registered as a trademark.

EXAMPLE: Using the flag of France on the label of a French wine cannot be registered as a mark.

5. UNAUTHORIZED USE OF A PERSON

The unauthorized name, portrait or signature of a living person or a person with an active estate, cannot be used as a trademark.

EXAMPLE: You cannot use the mark "James Dean" on a product without the permission of his estate.

6. A MARK LIKELY TO BE CONFUSED

This rule is the largest reason for a trademark application being denied registration. To understand this rule, you must first realize that all marks are considered either "STRONG MARKS" or "WEAK MARKS" by the Trademark Office. A strong mark can be created by using an invented or otherwise nonexistent word as your trademark. For example the trademarks Xerox® and Exxon® are strong marks. A strong mark may also result from your trademark becoming universally recognized as part of American culture. For example, the trademarks Coke-A-Cola^®, General Motors^® and General Electric^® are strong marks. If you have a strong trademark, your trademark will give you protection against any similar mark, regardless of whether the similar mark is used to identify goods in your industry or not.

EXAMPLE #1: I cannot open an airplane manufacturing company using the trademark Coke-A-Cola Airplanes, even though I would not be competing against the real Coke-A-Cola, because Coke-A-Cola^® is a strong mark.

Weak marks represent the vast majority of trademarks currently registered. Weak marks are marks composed of known words that are not universally identified with a single company. Generally, weak marks only give protection against similar marks that compete in the same industry.

EXAMPLE #2: Gold Medal^® is a well known trademark for flour products. However, the term "gold medal" is used in everyday language, therefore, the trademark "Gold Medal" is not universally associated with flour products. Because Gold Medal^® is a weak mark, another company would be allowed to use the trademark "Gold Medal" to identify products such as tennis shoes or any other product outside the flour industry.

With the knowledge of strong and weak marks in hand, the Trademark Office will deny a trademark if there is a likelihood of confusion between your mark and a previously registered mark. A mark fails the likelihood of confusion test when the Trademark Office believes that a consumer viewing the marks would be able to mistake the manufacturer of one product with the manufacturer of another product.

EXAMPLE #3: The mark "Silver Medal" cannot be used to identify flour goods because there exists a likelihood of confusion that a consumer would believe the flour came from the same manufacturer as Gold Medal^® flour.

7. DESCRIPTIVE MARKS

Words that are merely descriptive of a product cannot be registered as a mark.

EXAMPLE: UP & DOWN brand elevators, COLD & DELICIOUS brand ice cream and COTTON WHITE brand underwear are all unobtainable trademarks because they are descriptive of the products they identify.

8. GENERIC MARKS

A generic term can never be used as a trademark. Additionally, if your trademark becomes generic, you would lose your trademark rights.

EXAMPLE: "Escalator" used to be a trademark for a company that made moving stairs. Escalator became a generic term for describing moving stairs and "escalator" lost its standing as a trademark. Once a word becomes generic, any company can use the term.

Words such as Kleenex and Band-Aid are still trademarks but are on the verge of being considered generic terms.

The first thing a person must do before obtaining a trademark is to see whether another company has already registered the trademark. Often, newly starting companies will spend thousands of dollars on signs, advertising, letterhead and the like before the company opens for business. All of the money spent on these items would be wasted if you were told, after your company opened, that another company owned the rights to the trademark you had chosen. To prevent this mistake from occurring, a search can be conducted in the United States Patent and Trademark Office search library. The search library is located at Crystal Plaza 2, 2nd floor, 2011 Jefferson Davis Highway, Arlington Virginia. The search library is open Monday through Friday, 8:00 A.M. to 5:30 P.M. and admission is free.

If you are unable to do the search yourself, contact your local trademark attorney. Such attorneys regularly conduct searches on behalf of their clients for a minimal fee.

You do not need to register your trademark in order for it to be used. However, registering your trademark is the only way to prevent your competitors from also using your trademark. Additionally, by registering your trademark, you will discover if another company is already using your trademark. This may prevent future complications and lawsuits.

There are two types of trademarks, and the type of trademark you want determines where to register your trademark. The two types of trademarks available are State trademarks and Federal trademarks. Federal trademarks are issued by the U.S. Patent and Trademark Office. Federally registered marks can be obtained to identify any goods or services that are sold, used or advertised in more than one state. The granting of a federal trademark protects your trademark throughout the entire country. State trademarks are for goods and services that are entirely limited to one state. State trademarks are obtained from the Secretary of State for each of the fifty states.

Federal trademarks are acquired by submitting, to the U.S. Patent and Trademark Office, an application, a fee, samples of the trademark as used in interstate commerce, and an affidavit stating the first date of use. Federal trademarks can also be obtained for trademarks that have not yet been used but are intended to be used within six months. Such an "intent-to-use" trademark reserves the trademark in your name until you actually begin using the trademark on goods.

The rules governing obtaining a state trademark vary from state to state, but usually follow the same general procedure as the federal procedure.

When obtaining a federal trademark, your application will be forwarded to an Examining Attorney in the U.S. Patent and Trademark Office. An initial determination of registrability will be made by the Examining Attorney within six months after filing. If the application is rejected, the applicant, or the applicant's attorney, must respond to the Examining Attorney's objections within six months or the application will be considered abandoned. If the Examining Attorney approves the mark, the mark will be published in the Trademark Official Gazette. Once published, any other person has thirty days to oppose the registration of the mark. If no opposition is filed, the trademark will be issued.

Either a person or a trademark attorney may write, file and prosecute a trademark application. It is highly recommended that a applicant use an attorney registered to practice before the U.S. Patent and Trademark Office to represent the applicant. Such an attorney will be knowledgeable of the current trademark laws and will be able to provide the best guidance in obtaining a strong trademark.