Distinguishing Goods and Services

The final requirement for protectability is that the mark be a device used to distinguish goods and services.

Here are some things that cannot be protected by a trademark:

 

1. Generic terms: These are basic category names, such as milk, bread, car, tissue, or house and can never be protected or registered as trademark. If by accident it happens (on rare occasion it has happened), the application can be cancelled. If a protectable mark includes a generic term and a distinctive word or phrase, then the generic term will be disclaimed and the distinctive phrase will be protected if it meets all the other requirements.

2. False connection: These are marks that falsely suggest a connection with people who are living or in some cases dead, institutions, beliefs, or national symbols, such as the American flag. John Hancock for the insurance company is a registered mark, because it was found that no one would assume the insurance company was connected to the founding father.

3. Trade or business names: These don’t qualify because they are not inherently distinctive, unless they have established a secondary meaning.

4. Book titles: The general rule is that book titles cannot be protected by trademark because the book is a product and the title describes what’s inside the product. There are two exceptions:

— The title of a book series can be registered as a trademark, such as the Chicken Soup for the Soul series, the One-Minute Manager series, or the Dummies series, but not the individual titles, such as Chicken Soup for the Teen Soul or Chicken Soup for the Writer’s Soul.

— The title has acquired a secondary meaning. When I wrote Esteemable Acts: 10 Actions for Building Real Self-Esteem, it was not part of a series and it had not yet acquired a secondary meaning in the marketplace. So as an entrepreneur, I got busy creating and expanding my service and product offerings to include many more things than just my book. I used my mark in association with all of my self-esteem products and services. It worked—Esteemable Acts is a protectable mark. Once the second book in the series is released later this year, I’ll submit another trademark application to include protection for the title for the Esteemable Acts book series.

 

Your Trademark Workshop For the purpose of this exercise, think about a mark you are currently using, but haven’t registered yet. If none exists, make up a distinctive mark. Answer the following questions:   Does the mark fall within one of the four categories (trademark, service mark, collective mark, or certification mark)? Is the mark distinctive, and if so, which category does it most comfortably fit into (fanciful, arbitrary, suggestive, or descriptive)? Is it confusingly similar to other existing marks? Does it fall within a protectable device category, such as a word, symbol, or name?   If you answered yes to all of the above, then you are ready to protect your mark.