It’s easy to imagine that the day after
the first business in the world was
founded, the company probably presented its first advertisement, and the
art of branding was born.
Perhaps one of the biggest decisions a
company can make is how it decides to
brand itself. A catchy tune? Perhaps a
play on words that reveals the true mission statement of the company?
“A trademark and a copyright can
both identify the entity,” says Harvey
Yusman, an attorney at Greensfelder,
Hemker & Gale, P.C.
Smart Business asked Yusman about
what makes a good trademark and how
companies should use trademarks to
their advantage.
How much of a difference is there between
a trademark and a service mark?
The law is exactly the same between
the two. Specific services, such as
retail grocery, would use the service
mark. A trademark is the exact same
thing, except instead of promoting a
service, you’re branding a specific
product. And by doing so, you identify
and distinguish your product from
somebody else’s product. Think of Nike
shoes, with Nike being the trademark
and shoes being the generic product.
When you see the ‘swoosh’ or the name
on the box, you know Nike is distinguishing itself from, say, Adidas.
What can be used as a trademark?
Anything can be a trademark. The
Nike swoosh and the Polo pony are
very recognizable design trademarks.
Words alone can be a trademark. Sound
can even be a trademark, as well as slogans or colors. Numbers and letters
used separately or at the same time can
be a trademark. It can be almost anything that sets your goods or services apart from somebody else’s. That’s your
company’s identity. It’s like a franchise.
The name itself can be the most important part of the identity, such as
McDonald’s. You should be able to go
into a McDonald’s in Iowa and get the
same kind of hamburger as you would
from one in St. Louis, and you expect
that because you recognize the name.
It’s the very name ‘McDonald’s’ that sets
the restaurant apart from the others.
How does copyright work?
Copyright is not as clear. It identifies
a lot of things, but it concentrates on
the visual aspects of a creation and not
the actual brand. That usually includes
your brochures, your marketing materials, that sort of thing. And, obviously,
your marketing materials are different
than anyone else’s, as is your Web site.
And those things are identifiable intellectual properties that identify your
company.
How do you pick a trademark and make it
protectable?
In theory, there are four classifications to a trademark. If it’s being registered at the U.S. Patent and Trademark
Office, if you’re defending it in court, if
you’re prosecuting somebody else in
court, the key is always the same.
The best class is called arbitrary/fanciful. An arbitrary mark is a random
word that has no relationship to the
product at all. Such as Camel to cigarettes or Apple to computers. Fanciful
trademarks are made-up words like
Rolex or Kodak.
The next best class is called a suggestive mark. A suggestive mark makes
the mind go through two or three steps
to make the connection to the product.
An example is the trademark ‘uncola,’
which is used in connection with a noncola soft drink.
The third class is called descriptive,
and this one should be avoided because
it can only be registered with certain
qualifications. You need to show the
word(s) has a secondary meaning.
The last class can never be registered,
and it is the generic mark. These are all
specific names that have come to stand
for the type of product, like automobiles. Xerox, for example, does a lot of
advertising telling people not to use
their mark generically. The more creative your mark, the easier it is to register and eventually to protect from
other companies.
HARVEY YUSMAN is an attorney at Greensfelder, Hemker & Gale, P.C. Reach him at (314) 516-2630 or [email protected].
