William John Stoffel Esq.

• A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.
• A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.
  

Having a federal trademark registration on the Principal Register provides several advantages, such as:

• a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
• the ability to bring an action concerning the mark in federal court;
• constructive notice to the public of the registrant's claim of ownership of the mark;
• the use of the U.S registration as a basis to obtain registration in foreign countries; and
• the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Four classes of trademarks

For a mark to be a registerable trademark, the mark must be "distinctive" -- so that the mark is capable of identifying the source of a particular good. Marks are typicaly placed into four categories based on the relationship between the mark and the underlying product: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. 

Only (1) arbitrary or fanciful, (2) suggestive, can be initially registered on the principle register.   Descriptive marks can registered on the supplemental register and is used continuously for more than five years may be transferred to the principle register.  

• Fanciful marks are generally made up names that had no meaning before the trademark. For example, KODAK, VERIZON, AND EXXON  registered trademarks.  Arbitary marks are common words used in a way that their normal meaning bear no relationship to the goods or services which they are applied. For example, Apple computers.
• Suggestive marks requires you to take at least one more mental step to figure out what is being sugested.  Marketing folks like suggestive marks because they can create a favorable image for the consumers to associate with their product.  For example, greyhound bus (fast) or Obsession perfume (irresistible).
• Descriptive goods describe the product being marketed. For example computerland store (sell computers).  Descriptive marks may became protectable (on the principle federal register) if over time the mark acquires "secondary meaning" - that is consumers identify the mark with one source of product. If the descriptive mark does not acquire secondary meaning and does not obtain registration on the principle register, the owner will not be able to prevent others from using the mark. 
• Generic marks identify a class of goods. For example, using banana to identify bannas. Generic marks do not have any protection.

Selecting a registrable mark

Selecting a registrable mark before you begin to sell your product/services could save you a lot of money by reducing the risk that another trademark holder will prevent you from using that mark and could force you to lose all your investment in the mark. In addition, if you select a stronger mark, the costs to get the mark approved by the Patent and Trademark office will ussually be much lower.

See pdf for more info.