Actually the title should include “save your name, logo or slogan” but that’s a bit too long. In fact, trademarks can also be used to protect sounds, colors, shapes and even odors (more politely called “scents”). Although recently a judge refused a trademark protection request based on taste, trademarks have been filed for some very strange edibles. How about edible flip flops (no, I really don’t want to know about that….).
Typically, trademarks are used to protect names, logos and slogans – or “marks”. These marks are used to identify goods or services being sold – which is the “trade”. In the photograph above, you can see several examples of names as trademarks. On the box there’s “Arbuckles Roasted Coffees” and (on the left) “Bulleit Bourbon”. There is also an example of a logo – the flying angel on the coffee box (what that has to do with coffee is beyond me – maybe the caffeine makes you feel heavenly?). As for a slogan, perhaps “Pure Food Guarantee” on the coffee box counts, but that seems descriptive.
Which brings me to my next point – trademarks can’t describe what you’re selling. One famous example is “Tastee Freez” ice cream. Even with the funny spelling, the US Patent and Trademark Office (USPTO) stated that it was too descriptive. Tastee Freez was able to win this battle only once it had shown that customers associated its name with its specific products, not any generic ice cream (whether tasty or not). Now Tastee Freez is the proud owner of several trademarks, including this one.
Generally, registered word marks provide broader protection than logos or combinations of words and symbols. For word marks, use of the word(s) for similar goods/services is then considered to be a violation.
HOW SIMILAR IS TOO SIMILAR?
Similarity for goods and services is determined according to the class(es) which are covered by the registered trademark. For example, cosmetics and computer software are in different classes. Cosmetics are in international trademark class 3, while software falls into two different classes: class 9 for downloadable software and class 42 for SAAS (software as a service). If you want to sell downloadable software, then you need to file under class 9 – but it won’t necessarily protect you against someone who wants to use that mark for cosmetics.