If you're planning on registering a trademark, you must make sure that it falls within the categories protected by US Intellectual Property Law. For example, if you try to register “Library Books," but you have no products or services associated with it, you will be unable to sue for any damages if someone uses the phrase.
The landmark case Abercrombie & Fitch Co. v. Hunting World, Inc. resulted in the creation of the different categories of trademarks which are currently protected by law. A synopsis of them is as follows:
- Inherently Distinctive TM's – These are unique and haven't been created in any form before you registered them. A unique, first-time brand name is a great example of this. For example, if Jarnicklezi is the trademark, and the name has never been used before.
- Arbitrary TM's – These are existing words. For example, Apple. In order for you to successfully protect your arbitrary trademarks, they must be associated with a product or service – just as Apple is associated with electronics.
- Suggestive TM's – These suggest the nature of a product or service but still require the user to make the connection. For example, if “typepad” were a trademark, it minimally suggests a product which you can write on.
- Descriptive TM's – These require more proof than other trademarks in order to obtain protection of trademark law. For example, if you were trying to trademark the word “Smart” and your brand name is “Smart Mouse,” you'll need to show that consumers actually associate the word “Smart” with “Smart Mouse.”
Trademarks are just one piece of the puzzle. Your intellectual property is an important piece of your business and deserves to be protected. Ensure your future success and be sure to get smart on your intellectual property, including other aspects of your intangible asset arsenal.
Trademarks and patents and copyrights, oh my! It might seem scary, but it's so easy to learn from others. Download our "Taking the Scary out of Startups" eBook for more information on how to effectively run your company.