Define the different types of Trademarks
What is a Trademark? A trademark™ is a form of protection used to brand or promote a product being offered in the market place in the form of a word, name, phrase, tag-line (Standard Text Characters) or symbol, graphic, color (Stylized and/or Design) or a combination of both used or intended to be used to identify and distinguish the products/services of one seller or provider from those of others, and to indicate the source of the products/services.
In addition, other trademark categories, such as those based on color, smell, sound, patterns or any distinguishing attribute by which an individual is readily identified, such as the well-known characteristics of celebrities may be protected. Note, the essential function of a trademark is to exclusively identify the commercial source or origin of products or services identified by the mark.
What is a Service Mark? A service mark (SM) is a mark similar to a trademark, except it a form of protection used to brand or promote a service being offered in the market place. The terms “trademark” and “mark” often are used to refer to both trademarks and service marks.
What is a Trade Name? A trade name or a business name is the name a business uses for commercial purposes. (The legal name is the name registered with the state secretary of state office, such as ____ Inc., LLC or Partnership or the name used for contracts.)
What is Doing Business As? DBA (doing business as) is a name of a business or operation other than the owner or proprietor’s name, or legal name such as Inc., LLC or Partnership of the business. Most jurisdictions require businesses operating with fictitious names to file a DBA statement for consumer protection purposes with the county and/or state.
When should you use ® vs. TM/SM? Any time you claim rights in a mark that identifies a product or service, you may immediately use the “TM” (trademark on goods) or “SM” (service mark for services) designation to alert the public to your claim, whether you have filed a trademark application with the US Trademark Office or not.
® may only be used after registering with the US Trademark Office.
You may only use the federal registration symbol “®” after the federal US Trademark Office actually issues a registration for your mark, and not during a pending trademark application or after your registration has expired.
If you wish to file a US trademark application please Click here.
Mat Grell Trademark Attorney bio:
Law School: Thomas Cooley 1995 Undergraduate / Graduate: University of Iowa, BSEE Electrical & Computer Engineering 1988
Mat is a founding partner of Balser & Grell and brings a unique background and 15 years of IP experience to the firm. Mat currently concentrates his practice in patent drafting and prosecution, trademark applications, business contract drafting, licensing, and negotiation. Prior to founding the firm, Mat was a patent attorney at Myers & Kaplan, an Patent and Trademark boutique in Atlanta, GA. From 2000-2004, Mat was VP & General Counsel for Movaz Networks, Inc. His primary responsibilities included duties as a member of the executive team, including detailed experience with formation, raising $150M in capital, business contracts, intellectual property, HR/employment, corporate policy, M&A due diligence, dispute resolution, sales and business development, engineering & product management legal support, patents, trademarks, supply management and export compliance.
IP Experience – Mat’s patent prosecution experiences include telecommunication systems, optical switching, micro-electro mechanical systems (MEMS), optics and optical electronics, analog/digital circuits, power electronics, check processing, financial systems, insurance & plant inspection systems, desalination systems, waste water treatment apparatus, door and cabinet hinges, door closure and latch mechanisms, mechanical devices and systems, software, and business methods, among others.
General Counsel – Movaz Networks $150M VC funded telecom hardware/software company providing next generation all-optical network solutions based on University patent portfolio. Member of the executive team, including detailed experience with formation, raising capital, business contracts, intellectual property, HR/employment, corporate policy, M&A due diligence, dispute resolution, sales and business development support, engineering & product management support, supply management and export compliance. Chaired & managed an IP disclosure & review committee. Mat prepared patent and trademark applications and managed outside counsel, including patent and litigation counsel.
Entrepreneur – Founded start-ups such as Inventor Start Kit. The kit includes a digital download with inventor information & instructions, actual samples, and your own ready to use forms for recording your invention, evaluating the protectability and marketability of your invention. In addition, the website offers helpful educational information about inventions; Inventor NDA; and Inventor Business Plan Kit. www.BeanPool.com is a on-line and print publishing company in the local search arena. BeanPool provides a trusted resource for on-line users to share their opinions on local businesses and to connect with each other and with the best businesses in their community.
IP Licensing Experience – Senior Licensing Officer with the University of California Office of Technology Transfer & Michigan State University Office of Intellectual Property Manager of Engineering & Physical Sciences, Office of Technology Transfer System wide office. Managed technical writers, technology marketers and an intellectual property portfolio of 300+ inventions yearly, negotiated and drafted terms and conditions of research, material transfer and license agreements (software, electronics, medical devices, physics& plant varieties), managed patent interference actions, mediation, arbitration, litigation and outside counsel.
Corporate Contract Experience – NDA, development, prototyping, contract manufacturing, trials, quality assurance/testing, interoperability, purchase & license, support, maintenance & EFI services, patent trademark & software licensing, reseller/distributor, services, teaming, OEM, software escrow agreements, IT, web development, joint development, supply, promotion, and other business contracts.
Engineering Experience – Worked as a controls Engineer, Department of Power Operations, Hydroelectric Power Plants Union Electric. I managed 15 electricians & mechanics as the senior project engineer for the automation and remote control of hydroelectric generators using PLCs, rewinding of generators and their conversion to static excitation, and switch yard and transformer installations.
Mat is licensed to practice law in Georgia and Washington. Mat is also registered to practice before the U.S. Patent and Trademark Office.
Mat is a member of the State Bars of Georgia and Washington and the American Bar Association.
By Mat Grell, Trademark Attorney