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What Business Assets Should be Protected as Trademarks?

Posted on in Intellectual Property

Florida trademark attorneyAs a business owner, you most likely have created some valuable intellectual property (IP) that should be trademarked. But are you clear on the definition of a trademark? This article will explain what types of IP can and cannot be trademarked.

FYI, the term “trademark” in its narrowest sense is used in reference to products while the term “service mark” is used in reference to services (e.g., Jiffy LubeⓇ oil change service). However, the term “trademark” is commonly used in reference to both products and services because the same US law generally applies to both.

What Is a Trademark?

A trademark is something that makes it easy for consumers to recognize your brand when they see it. It can consist of words, graphic elements, or both.

What Kinds of Things Can Be Trademarked?

You can trademark a distinctive:

  • Word or phrase;
  • Symbol;
  • Combination of words and symbols; and
  • Scent, color, or sound, if it serves no important practical function other than to differentiate the brand and if you can show that consumers strongly associate it with your brand.

Here are some illustrative examples:

  • Brand names: NikeⓇ, GatoradeⓇ, AppleⓇ, iPhoneⓇ, Jiffy LubeⓇ, NASCARⓇ, BMWⓇ;
  • Phrases: Jiffy Lube Signature ServiceⓇ - a particular type of service offered by the Jiffy Lube brand. The Ultimate Driving MachineⓇ - the BMW slogan;
  • Brand symbols or logos: The Nike swoosh. The Gatorade G with a lightning bolt through it. The Apple logo of an apple with a bite out of it. The BMW logo with blue and white wedges inside a black circle imprinted with BMW in white; and
  • Scents, colors, and sounds: The smell of Play-Doh. The NBC three-note chime. The pink color of Owens-Corning fiberglass insulation.

What Kinds of Things Cannot Be Trademarked?

You generally cannot trademark a generic term like “computer” or “orange.”

You might wonder, then, how Apple could trademark its name. The answer is that you cannot trademark the word apple in reference to a specific type or brand of apple. You can, however, trademark the term Apple for a type of product that is far from the category of fruit, such as the category of computers, which is what Apple did. This is why Apple’s trademark usage guidelines require that their brand name is used as an adjective and never written in plural form. You can write, “Our store sells AppleⓇ computers” but not “Our store sells Apples.”

Consult a Tampa Trademark Lawyer

If you have created a distinctive name or logo for a product or service that you sell, you may want to register it as a trademark with the US Patent and Trademark Office. Federal registration, while a lengthy and complicated process, gives you more legal protection against competitors who might try to mimic your work and cannibalize your business. Contact an experienced Florida trademark lawyer for assistance.

At Nelson Cyber Law, PLLC, we focus on intellectual property and digital/internet law, which includes the protection and defense of trademarks as well as the protection and defense of copyrighted original works that are shared or sold in digital form on the internet. To schedule a consultation, call Nelson Cyber Law at 1-800-440-5536.  

Sources:

https://www.uspto.gov/trademark/laws-regulations

http://form.sunbiz.org/pdf/Chapter_495_Booklet.pdf

https://cyber.harvard.edu/metaschool/fisher/domain/tm.htm

https://www.thebalancesmb.com/trademarks-and-service-marks-397829

https://www.apple.com/legal/intellectual-property/trademark/appletmlist.html

https://www.washingtonpost.com/news/business/wp/2018/05/24/remember-how-play-doh-smells-u-s-trademark-officials-get-it/?noredirect=on&utm_term=.f2706c9afad0

 

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