Whether to request a trademark, service mark or copyright?

The image should be copyrighted. The food product's name would be a trademark. While the registration procedure is pending you are protected, provided no one else has rights. That is why doing a proper search is crucial. Have an I.P. attorney do that search. Good luck.

Your fictitious name should be registered as a trademark. If you have not done so already, a clearance search should be performed to ensure that it is not confusingly similar with anyone else's trademark. A business name registration does nothing to guard against a trademark issue - they will register anything that is not identical to something else, and the standard for trademark infringement is likelihood of confusion. Additionally, trademark rights come from use of the mark in connection with goods or services in a specific geographic area, known as common law rights. Registration provides a presumption of the right to use the mark throughout the entire country (or state if it is a state registration). So, both registered and common law marks must be searched and evaluated. Variations, fragments, and misspellings of the name must all be searched. An application for registration should be filed if the results are favorable. Your product description can be protected by copyright, but protection will be quite narrow in scope. You will not be able to stop someone else from describing a similar product. Copyright will protect only the description, not the product itself. Whether trademark or copyright (or both) is appropriate for your image depends on exactly how it is being used, and whether it serves as an identifier of a source of goods in that context. Copyright protection is almost certainly available. In either case, if the image was created by someone else, make sure you own the rights to it. If your employee created it at your direction, then it is a work made for hire and you own it. If an independent contractor created it, then you need an assignment or a work made for hire agreement. You may wish to protect the method of making the food product through trade secret. Designate the recipe to be a trade secret, protect it through physical and electronic security, disclose it only on a need to know basis, and require signature on a nondisclosure agreement before anyone is shown the recipe. The recipes for Coca-Cola and Thomas' English Muffins have both been protected by trade secret for a long time. You did not ask about patent protection, but I will go ahead and state that patent protection is almost impossible to obtain for a food product.

Before I respond to your inquiry, I must state that we have not spoken, I have not reviewed the relevant documents and facts, and I do not represent you. Therefore, my discussion below is not a legal opinion, but is informational only. Finally, my discussion applies only to issues to which Pennsylvania, Delaware, New Jersey or Federal law applies, unless otherwise specified. That being said, this is a trademark issue, although the name itself without the log may be something that you will want to also trademark. It takes fewer steps to trademark a product that is already in the stream of commerce, so starting to sell now, especially if you cannot find anyone who has any product that might be competitive and/or with a similar name or mark. While the application is pending, you have protection, but only to the extent that you are 'first in line' - if someone has applied before you, their application would take precedence. You should speak with a business attorney to determine what legal hoops you have to jump through, including IP issues, to get your food product to market. /Christopher E. Ezold/

So you need to consider each on its own or at least in most cases, which is why you need to get some specific advice and not just rely on general responses here. So for example, the word "McDonald's" is the business name and a standard character text mark; the golden arches is a logo of course but this is also a trademark referred to as an image mark or stylized mark and will go on it own separate application. This is because image marks, those where you lay claim to artistic or graphical elements like color, are taken as a whole. So trying to stick your text into the image mark and thinking that it too will be adequately protected can be a big mistake. In some cases it may very be protected and in others it will leave you exposed. Now "I'm Lovin It" is a tagline or slogan and is its own text mark. "Big Mac" is a product name along with "McNuggets" and are also text marks that are cleared and filed separately - you get the idea... If the image (logo) has a lot of creative elements I would also register that with the US Copyright Office as well so to perfect your bundle of federal rights. As for the description of the product itself that is not really something you can protect other than your creative expression through copyright assuming you are not just stating facts. If you have actually invented something here, then it might be worth exploring patent protection. That said, your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance. Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a brief article from Fox Business News on the importance of the due diligence process and our overview guide. I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with. Best regards, Frank Natoli-Lapin, LLC

You have a misunderstanding of trademarks but the good news is that the situation is better than you think. You are not "given" a trademark by the USPTO. the USPTO grants registrations for trademarks but that is a different thing. Once you start to use a mark, you accrue rights to it from usage, even if you never register it. While registration provides you with additional rights in case of litigation and puts the public on notice of your ownership, it is not necessary. It would be a terrible business environment if you had to wait a year to get a trademark issued to you before you could sell a product! As far as doing a trademark search, checking the USPTO database is a start but since trademarks do not have to be registered, there may be uses of the same or similar mark that will not be in that database. If you intend on investing in the sales and marketing of your product, it makes sense to consult with an experienced trademark lawyer who can assist with both the trademark search and analysis of the results. Best of luck with your project.

It is recommended that your trade name (fictitious name) should be cleared by an experienced trademark attorney, as well as the product name, if they are not the same. Your exact hit search on the trademark office website is not reliable, a full search should be conducted and the report analyzed. If your trade name and trademark are cleared, the word mark(s) should be applied for federal registration. The logo should also be protected by federal trademark filing, and if the logo is an original artwork, you may consider filing for a copyright registration, although that is not necessary, unless you suspect that the logo is being copied. While your trademark application is pending you have common law and federal rights that are building based on the filing of your application and your use. You should use the mark and grow your use based rights in your trademarks while the application is pending.

You need to show what you have to a trademark attorney you select so that person can, with the protection of the attorney-client relationship, guide you on the optimal course of action. Not seeing your description and image makes advice of any kind too difficult.

My colleagues all offer good advice. I would add, that if you are able to file an application with the USPTO for your word mark and/or logo, you would be eligible to file an Intent to Use application. What is great about this procedure is that it gives you protection for the use of your make that, provided you get the registration, is retroactive to the date of the filing of the application. There are always some technical issues when filing for trademark protection, so working with an experienced TM attorney in the end will not only save you time but money. The USPTO's website for trademarks has a good deal of information you could explore. See link below as a starter

Your question raises a number of issues, some of which have been addressed by others, and I do not provide legal advice here, but can help you identify issues to pose to the experienced intellectual property counsel (more than just trademark or just copyright) you will need to retain. First you mention a food product. If this entails something that is subject to FDA approval and special labeling requirments, you may have longer time frames to worry about than trademark prosecution. You should include food product experience in your counsel search as well. Second, you mention that you want your mark "to protect the description of the product". Descriptive marks can run afoul of USPTO registration refusals under Section 2(e) of the Trademark Act for descriptiveness. Trademark law favors and encourages you to coin arbitrary, fanciful or at least "suggestive" terms to identify your goods and services. Ask you lawyer to help you with these distinctions, but trust me the less your mark describes the product it identifies, the better. Third, you ask whether you should seek a trademark or service mark. Generally you are safe to assume a product or "good" is identified by the former, and services by the latter, but your lawyer may discussing adding services like distribution of your product to be identified by the mark. And as soon as you start selling your product, even before registration, you may and you should add a superscript TM to your mark to show the words and/or design are being treated as a mark. You can only replace this with a circle R symbol, however, AFTER registration of the mark. Finally, while the "image" you mention to be placed between two words whether a stylized design or logo, may be important enough to file for copyright protection as an expressive work of original authorship, but you should also discuss this with your counsel to determine whether it may be enough merely to file it with or without the words as a design mark protected under trademark law, - but only so long as the design too is used to identify the food product you are selling. Let me urge you to contact a lawyer experienced in trademark and copyright matters so you can communicate the facts and questions you have confidentially. Try calling those that offer a free consultation and select someone in whom you feel confident you can trust with this important concern. Good Luck.