Trademark Clearance and Usage Guide

February 02, 2017

A trademark is a word, symbol, or a combination of both, which serves to indicate that your company is the source of goods. A service mark is the same except it is for services rather than products. Trademarks are valuable assets of your company and should be protected by following the simple procedures outlined below. If you have questions about how to use trademarks or service marks, do not hesitate to get advice from experts within your company, or from your attorneys.

Some trademarks are fanciful, meaning that the words have no meaning apart from the goods or services they identify. Examples of fanciful marks are KODAK® for film, and XEROX® for copiers.

Some trademarks are arbitrary, meaning they are an ordinary word but that word has no significance with respect to the goods or services it is used on other than to identify their source. An example of an arbitrary mark is APPLE® for computers.

Some trademarks are suggestive, meaning they bring to mind some property or function of the goods they relate to. Examples of suggestive marks are ELEPHANT for floppy disks, and DIAL® for deodorant soap.

Some trademarks are descriptive, meaning they describe the goods or services, or a quality or characteristic of the goods or services involved in a manner that does not require interpretation. Descriptive marks usually may be registered or protected only upon proof of distinctiveness, i.e., by proof of considerable sales and advertising, or long-standing use. Examples of descriptive marks are AMERICAN for over-the-road trailers, and REALTOR® for real estate counseling and sales services.

Generic words, which are merely descriptive or apt common names for products or services are not protectable trademarks or service marks. Many current generic names for products were once trademarks. Examples of generic names are ASPIRIN, KEROSENE, THERMOS, and ESCALATOR.
These trademarks were lost as assets for the companies that developed them when the public began to use them generically to describe the goods involved, as distinguished from a certain brand of those goods.

If your trademark or service mark becomes generic, it will no longer be the exclusive property of your company and can be used by anyone. To help ensure that your trademark property maintains its value and cannot be used by others, the simple rules inside this guide should be followed.

View PDF of Merchant & Gould's Trademark Clearance & Usage Guide.

Practices