The most common question that I receive from clients is “Can I trademark this word/phrase/logo/brand?” My answer is always the same: “No.” The answer is always “no” because you either have a trademark, or you don’t. What my clients really mean when they ask whether they can trademark something is whether they can obtain a federal registration for their trademark from the United States Patent and Trademark Office. My answer to that question is typically “maybe.” Obtaining a trademark registration can be a tricky process. In fact, many applications filed with the USPTO never mature to registration.
But registered trademarks can serve as valuable marketing and advertising tools for a business. Incorporating trademark protection into the early stages of your brand development process can provide significant advantages. This article will provide a summary of those advantages, in addition to tips for selecting a trademark, applying to register a trademark, and protecting a trademark once registered.
A trademark is a word or unique combination of letters, words, sounds, designs or other elements that identify the source of goods and distinguish one company’s goods from those of another. A service mark functions similarly by identifying the source of services. For purposes of this article, references to “trademark(s)” include service marks. Trademarks are also a symbol of goodwill—they become more valuable over time as they acquire notoriety among consumers.
Most people are surprised to learn that in the United States, trademark rights are based upon use, not registration. In other words, an individual or entity can establish trademark rights solely by using a distinctive mark on or in connection with the sale of their goods or services. That trademark owner also has the right to prevent third parties from using an identical or similar mark if such use would likely cause confusion among consumers as to the source of the goods or services.
Benefits of registration
While a registration is not required before using a trademark, registration at the federal level provides significant additional benefits beyond common law. By simply having your trademark registration published in the USPTO’s public database, your registration may deter others from adopting an identical or confusingly similar mark and may serve as the basis for a U.S. Examining Attorney’s objection to a third-party’s application to register an identical or confusingly similar mark.
Trademark owners that obtain a federal registration are also permitted to use the registered trademark symbol (®) which puts the public, including competitors, on notice that the mark is registered with the USPTO. The registered symbol can deter would-be infringers by informing them that the owner possesses the benefits of a federal registration and may be more likely to enforce its intellectual property rights. In addition, possessing a federal registration also confers benefits during litigation, including serving as prima facie evidence of ownership, which may also help to quickly resolve disputes before reaching litigation. After five years of registration, you may also be able to gain the benefit of “incontestability” for the mark, which limits the grounds on which third parties can challenge your rights in the mark.
Finally, if you sell products online and wish to participate in Amazon’s Brand Registry program, you must have an active federal trademark registration to do so.
Choosing a mark
If you are just starting your business or you have not adopted a trademark, you should take a number of factors into consideration when choosing your mark. First, you should create a list of a potential candidate trademarks that are unique and creative. Consider the nature of the candidate marks, including the relative strength of each option. A strong or distinctive mark is generally easier to register and protect than a mark that is descriptive or generic.
Under the law, trademarks are categorized on a spectrum of strength, ranging from unprotectable (generic marks, such as ESCALATOR for moving stairs) to weak (descriptive marks, such as COLD AND CREAMY for ice cream) to moderately strong (suggestive marks, such as NETFLIX for streaming services) to strong (arbitrary and fanciful marks, such as AMAZON for online services and DASANI for bottled water).
It is best to avoid generic and descriptive marks. Suggestive marks are often a great choice—they are both moderately strong and commercially marketable because they hint to consumers the nature of your product or service. Arbitrary and fanciful marks are the strongest marks under the law but can be more difficult to market than suggestive marks given they have no inherent meaning or connection to the products being sold. Accordingly, it may be necessary to expend more money, time and effort to educate consumers as to the relationship between an arbitrary or fanciful mark and the trademark owner’s products.
Conducting a search
Once you have identified a few viable mark options, you should determine whether any other parties are using the same or a confusingly similar mark. You or your attorney should (1) conduct a search of pending and registered marks in the USPTO database, (2) run internet searches for common law uses, and (3) check hashtags and handles on social media platforms. If you plan to operate a website or social media account, make sure your desired domain name and social media handles are available before choosing your mark. Once you select your mark, work with an intellectual property attorney to prepare your application. They can assist you in drafting an appropriate description of goods/services and identifying an acceptable specimen.
Once you have obtained a federal registration, it is important that you implement a maintenance program to protect it. Display the registered trademark symbol “®” when using your mark in commerce. Keep records of matters related to your mark, including advertising and packaging samples and copies of correspondence with alleged infringers. Your registration can last indefinitely if you continue using your mark in commerce and you renew it when required. The Lanham Act (the federal trademark statute) requires that trademark owners renew their registration(s) between the fifth and sixth anniversaries, ninth and tenth anniversaries, and every ten years thereafter.1 Finally, you should monitor the marketplace for infringers by conducting frequent searches or employing a third-party watch company.
With proper planning and research, you can obtain a trademark registration that will not only serve a valuable business asset and symbol of goodwill, but will also appreciate in value over time as your business reputation grows.
Kate Sherlock is an intellectual property attorney at Haddonfield-based Archer & Greiner PC.