What should a business trademark?

Trademarks - BrandsI have so many things to trademark – where do I start?

I get this question all the time. First, keep in mind that the strength of a brand is in its ability to distinguish a product or service from similar products being offered by others. Think of any famous brand (Starbucks(R), McDonald’s(R), or other famous trademark). While these companies may have multiple trademarks, they put the most effort into marketing only a few of these brands.

Most trademark attorneys will recommend a Clearance Search and Opinion – Using someone’s else’s mark can result in a trademark infringement action!

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Can I file a trademark or copyright for a product name?

Attorneys are often asked “can I file a trademark or copyright for a product name?”

Generally, an application for a federal trademark registration can be filed for a word-only, word-and-graphic, and/or graphic (e.g., logo) trademark that is used to identify the source of goods or services in interstate commerce.

There are some basic requirements, however. For example, the trademark sought to be registered can not be confusingly similar to a mark already being used by someone else. In addition, the mark cannot be generic (e.g., the terms “gas station” used to identify a “gas station”). Merely descriptive marks can be difficult to register, and the Trademark Office Examiner will often require that the mark be registered on what is called the supplemental register (as opposed to the principal register), until the owner of the trademark can be shown that the trademark has acquired secondary meaning.

Other types of trademarks are easier to register. For example, suggestive (e.g., “hot chocolate” to identify sun tan lotion), arbitrary (real-words used to describe something totally different, e.g., “Apple” to identify a computer), and fanciful (made up words, e.g., “Xerox”) trademarks can be registered on the principal register without any showing of secondary meaning.

Suggestive, arbitrary, and fanciful trademarks are also considered stronger marks. That is, these trademarks are typically afforded broader protection against infringers, with arbitrary and fanciful marks often being afforded the strongest protection.

Those seeking trademarks often initially propose descriptive and suggestive marks. While it is possible to file a registration application and argue that the trademark is suggestive (and not merely descriptive), the applicant may have to amend to the supplemental register if the Trademark Examiner disagrees and asserts that the trademark is merely descriptive.

Finally, it is a good idea to work with a trademark attorney, and conduct a professional trademark search before using a mark, to reduce the possibility of infringing on someone else’s trademark rights.

What everyone must know about trademarks

When you start your own business, you already have an idea for your business, and so the next logical steps always seem to be: 1) register an Internet domain name, 2) get business cards, and 3) reserve a name for your product or service (a trademark).

The first two steps are easy, and you decide to do those yourself. You may be unsure whether you can reserve a trademark, and so perhaps you check around on the Internet to see what local trademark attorneys charge to help you. Initially thinking that a trademark attorney can help you for $100 or so, you’re shocked when you see what trademark attorneys actually charge.

Next you may look at so-called “self-help” services. While often less expensive than a trademark attorney, you have to ask yourself “what am I really getting from the self-help service” that you couldn’t just do on your own.

I can spend the rest of this post explaining why trademark attorneys charge so much, and why using self-help services is a bad idea. But that’s not my purpose today. Instead, I want to tell you a few things that everyone must know about trademarks, and why if you don’t understand these basics, you can find yourself in a heap of trouble.

1. You need to know if anyone else is already using your mark. This may seem obvious. If you wanted to set up a coffee shop, you’re going to need an original name. You know that you can’t trade off of the goodwill of established and well-known coffee houses. A good place to start is with a general Internet search engine, such as Google, Yahoo, and Bing. Next you might try searching the state registers and the US Trademark Office. Most state registers are available online now, and the US Trademark Office database is available online for free.

2. You need to know if your mark would be confusingly similar to anyone else’s mark. What does that mean? Just because you don’t find an exact use of your mark, the standard for registering a trademark with the US Trademark Office, and the standard for trademark infringement, is whether a consumer of products or services would be confused by the use of the two marks in question. This is really where the trademark attorney earns his or her fee. It’s generally easy to find out if someone is already using your exact mark for the same goods or services. It’s a lot harder to identify and then determine whether someone else’s mark, although not identical to yours, might be considered confusingly similar.

This is why its best to hire a trademark attorney to assist you with this determination. Trust me, if you try to register your mark or start using your mark, you may find yourself faced with a letter from someone else’s attorney telling you to stop or face an infringement action (this is called a “cease and desist letter”). Getting yourself out of this mess is going to cost you a lot more time, money, and heartache, than if you had just paid the trademark attorney to help you in the first place.

3. You cannot use the encircled “R” notation. That is, unless and until you receive a federal trademark registration from the US Trademark Office. Otherwise, you are violating the trademark laws. And you may also be violating other state and local laws, rules, or ordinances based on consumer protection or fraud.

So can a trademark attorney save you money? While reserving your trademark may seem as simple as ordering business cards at your local office supply store (so why pay a trademark attorney), there are many intricacies that a trademark attorney can help you with that can trip you up and end up costing you more in the long run than if you don’t hire a trademark attorney from the get-go.

Branding your product or service

Many customers buy particular products or services because they have become accustomed to a certain degree of quality in the product. Many people will even pay more for certain brands of soft drink than they will pay for a generic soft drink.

Brands or trademarks designate the source or origin of goods or services. By consistently providing high-quality goods or services under a trademark, along with a successful marketing campaign, customers come to associate trademarks with a certain degree of quality in the goods and services being provided.

In other words, brands can be used to establish customer loyalty.

This customer loyalty is also called “goodwill.” The goodwill you establish not only affects the sale of your current goods and services, it may also carry over to other goods and services that your business may introduce in the future. For example, when a product is well-known and then you introduce a new product, loyal customers will often purchase the new product without having ever tried it before based only on your brand. That’s because the customer expects a similar degree of quality to that which they have become accustomed to with other products you offer. This gives you a distinct marketing advantage when introducing new products. In fact, you will often see new products that are introduced with the statement “from the makers of [insert brand here].”

But don’t risk losing all of this goodwill. Work with a trademark attorney to properly protect your brand with trademarks.

Reasons to register your trademark

You are not required to file a trademark application for registration with the US Trademark Office in order to have trademark rights. But there are advantages of federal trademark registration, including:

Others cannot register a mark that is confusingly similar to your mark.

A trademark registration is constructive notice of your claim of ownership in your mark.

A trademark registration is a legal presumption of your exclusive right to use the mark nationwide.

A trademark registration is a basis for registering your mark in foreign countries.

A trademark registration allows the trademark owner to bring an infringement action in Federal Court.

A trademark registration allows the trademark owner to file with U.S. Customs to prevent others from importing infringing foreign goods.

A trademark registration allows you to use the encircled-R notation ® after the mark is registered.

 

Someone opposed my trademark application

Unfortunately, individuals and small businesses often try to save some money and apply for their own trademark application. Then they end up calling a trademark attorney because someone opposes registration of their trademark.

This situation may arise even if the US Trademark Office initially approves your trademark application, because your trademark is published for opposition before the US Trademark Office will register your trademark. During the opposition period, anyone can oppose registration of your trademark if they believe that they will be harmed by the US Trademark Office granting a trademark registration for your trademark.

One reason someone may oppose your trademark is if the opposer believes that your trademark is merely descriptive, or even a generic term, that anyone should be allowed to use in commerce. The opposer might argue that they will be harmed if the US Trademark Office grants your trademark registration, because they, and others would no longer be allowed to use those words to fairly describe their products or services.

Another reason someone may oppose your trademark is if the opposer believes that they have been using the trademark as their own before you started using your trademark. Therefore, the opposer may argue that they have priority and are entitled to use the trademark instead of you.

Another reason someone may oppose your trademark is if the opposer believes that your trademark is the same as, or confusingly similar to their own trademark. Someone may argue that your trademark is confusingly similar to their own trademark even if your trademark is spelled differently. For example, EXTREME is virtually indistinguishable from X-TREME.

Of course, these are merely allegations until proven otherwise. Therefore, you may be able to prevail and have your trademark registered. But it is best to work with an experienced trademark attorney who can help you navigate the opposition proceedings so that you don’t end up losing rights to your trademark for missing a deadline or making an inadequate argument.

How to get a trademark

Trademark rights are not established simply by filing a trademark application with the US Trademark Office. Trademark rights can only be established by using your mark (words, design, or logo) in a consistent manner to identify goods or services in commerce. In fact, you cannot even file a federal trademark application unless you are already using your mark as a trademark in interstate commerce, or have a bona fide intent to use your mark as a trademark in interstate commerce (typically within about six (6) months of filing the trademark application).

So you can’t just file trademark applications to “reserve” a mark that you might want to start using sometime in the next five (5) years. You can, however, take the following approach:

1. Do a trademark availability search. A trademark availability search will give you some idea whether the mark you want to use is already being used by someone else for the same or similar goods or services. A good place to start is with the big Internet search engines (Google, Yahoo, Bing). And don’t forget to check the US Trademark Office databases. If you find others using your mark or similar marks for your product or service (or similar products and services), then you can pick another mark. At least you found out before you started your branding campaign and didn’t have to receive a cease and desist letter from the other trademark owner.

2. Discuss your proposed trademark with an attorney. If you think the mark you have chosen is available, consult a trademark attorney. A trademark attorney can tell you whether your mark is a strong mark or a weak mark. A trademark attorney can help you determine whether you might run into trouble when trying to register your trademark with the US Trademark Office. A trademark attorney can also tell you whether you run the risk of having another trademark owner stop you from using your mark because it is too similar to their own trademark.

3. File a trademark registration application with the US Trademark Office. Hopefully you haven’t started using your trademark yet. Once you know that you plan to use your mark as a trademark in interstate commerce within the next several months, you can file what is called an Intent-To-Use (ITU) trademark application with the US Trademark Office.

If you have already started using your mark as a trademark in interstate commerce, you can file an actual use trademark application with the US Trademark Office.

Here again, it is a good idea to speak with a trademark attorney and have the trademark attorney file your trademark registration application with the US Trademark Office so that you don’t make any mistakes that could come back to haunt you.

Only after taking these steps should you start your branding campaign . . . printing business cards, brochures, and other literature, buying advertising, labeling your product, and so forth. Otherwise, you may be forced to stop using your mark and start all over . . . which can be costly. Not to mention, you lose any goodwill that you may have already started to establish with your customers.

Tag Lines

Tag lines can be an important part of a brand and your overall trademark strategy, if used effectively.

One way to effectively use tag lines as part of your trademark strategy is to describe the product or service when the trademark or logo is unclear by itself. For example, a strong trademark is a completely made-up trademark, like the famous Coffee House (yes, you know the one I am talking about even without my having to name it here in this article). But until everyone knew what they were selling, it probably helped to use a tag line describing their product (“coffee”).

Another effective way to use a tag line as part of your trademark strategy is to use a trademark which conjures a pleasant image in the mind of the customer. The customer will then come to associate your trademark with that pleasant image. For example, a travel agent may use a tag line saying “. . . taking the hassle out of travel.” Now when customers see the travel agent’s trade mark, they will think of stress-free travel, an obvious positive.

Of course there are many ways to use tag lines as part of an effective trademark strategy, and we have only scratched the surface here.

Here’s a Tip when selecting a tagline to use as part of your trademark. Be creative . . . and put some thought into it before you adopt a tagline as part of your brand. There is nothing worse than a brand that changes every couple of weeks, months, or even every couple of years. The key to a strong brand is consistency . . . because consistency helps build customer loyalty. And customer loyalty can mean a successful business.

 

Trademark Basics

I am often asked “Do I need a Trademark for my invention?” Patents and Trademarks are different kinds of legal protection. Trademark protection may be available for the name and/or logo used to identify your goods or services in commerce.

A strong trademark (or service mark) can be key to a successful marketing campaign. Ultimately, customers identify the mark with the goods or services your business is selling.

Some advantages of Federal Trademark Registration include . . .

1. Others cannot register a mark that is confusingly similar to your mark.

2. A trademark registration provides a legal presumption of your exclusive right to use the mark nationwide, and serves as constructive notice of your claim of ownership in your trademark.

3. A U.S. trademark registration provides a basis for registering your mark in foreign countries.

4. A trademark registration allows you to bring an infringement action in Federal Court, file with U.S. Customs to prevent others from importing infringing foreign goods.

Once your trademark is registered, you can use the encircled-R notation ® to designate your trademark.

Some Common Pitfalls to avoid . . .

1. Selecting a weak mark.

2. Selecting a mark that is generic or merely descriptive of your goods or services.

3. Selecting a mark that is confusingly similar to someone else’s mark.

4. Failing to fully and accurately identify all of your goods and services in the trademark application.

Hire an attorney to help you identify any existing marks that may be considered confusingly similar to your mark before you start using a trademark. Your attorney can also guide you through the selection process to help you identify a strong trademark for your products or services. Then your attorney can help you with all aspects of state and federal trademark registration, and advise you on the proper use of your trademarks so that you are able to build the strength and value of your trademark.

Visit www.trennerlaw.com for more information about costs to register a trademark.