Marks, trademarks and servicemarks: marketing and selecting a mark!

Understanding trademark law can be a vital part of marketing strategy.  A mark is generic way of saying a trademark or service mark that helps differentiate or identify a product or service that you provide.  A trademark generally refers to a mark used to provide a product, whereas, a service mark generally refers to a mark that is used to provide a service. 

Selecting an appropriate mark that can be serve as a strong trademark or service mark requires a thorough understanding of how the USPTO permits registration of marks, the Trademark, Trials and Appeals Boards (TTAB) proceedings and how court’s enforce marks.  Selecting generic or descriptive terms to use as a mark will often lead to difficulties in registering and enforcing a mark.  A generic or descriptive mark will also be subject to cancellation and reexamination proceedings. 

On the other hand, selecting an arbitrary or suggestive terms as a mark will enable you to more easily register or enforce a mark.  However, determining what terms are descriptive and suggestive is not always easy and often requires a thorough understanding of the industry, the product or service, and the normal or typical use of the term.  A common example is Coppertone-is it descriptive, suggestive or both for providing suntan lotion. 

Taking the time to consult with a trademark professional to understand how the terms you selected as a mark will be viewed by the USPTO, the TTAB, the ITC (International Trade Commission) and Courts will aid increasing the value of your mark and developing your marketing strategy.  In addition, there are numerous other considerations, such as, conducting a trademarkability search, determining other users, the similarity of the marks used by others, the ability to differentiate your mark from other users, concerns about prior users, abandonment, geographic considerations, mis-descriptive use a term, and scandalous or immoral material. 

In developing and selecting a marketing strategy, understanding how to create a strong mark can assist in developing a strong family of marks.  If you have any concerns or questions about selecting an appropriate mark for your product or service, then please feel free to contact us.

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