The most common question I get from customers is “Can I register this word / phrase / logo / brand?” My answer is always the same: “No”. The answer is always “no” because you either have a brand or you don’t. What my clients really mean when they ask if they can file a trademark is if they can get a federal registration for their trademark with the United States Patent and Trademark Office. My answer to this question is generally “maybe”. Obtaining a trademark registration can be a delicate process. In fact, many applications filed with the USPTO never succeed in registering.
But trademarks can be valuable marketing and advertising tools for a business. Integrating brand protection into the early stages of your brand development process can provide significant benefits. This article will provide a summary of these benefits, along with tips for selecting a trademark, applying for trademark registration, and protecting a trademark once registered.
A trademark is a unique word or combination of letters, words, sounds, designs or other elements that identify the source of products and distinguish the products of one company from those of another. A service mark works in a similar way by identifying the source of the services. For the purposes of this article, references to “trademarks” include service marks. Trademarks are also a symbol of goodwill – they gain in value over time as they gain notoriety with consumers.
Most people are surprised to learn that in the United States, trademark rights are based on use, not registration. In other words, an individual or entity can establish trademark rights only by using a distinctive mark on or in connection with the sale of their products or services. This trademark owner also has the right to prevent third parties from using an identical or similar trademark if such use is likely to create confusion among consumers as to the source of the goods or services.
Benefits of registration
Although registration is not required before using a trademark, registration at the federal level offers important additional benefits beyond the 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 similar mark to the point of confusing and may serve as a basis for objection. from a US examining attorney at the request of a third party to register an identical or confusing mark. similar brand.
Trademark owners who obtain federal registration are also permitted to use the trademark symbol (®) which alerts the public, including competitors, that the mark is registered with the USPTO. The registered symbol can deter potential violators by informing them that the owner has the benefits of a federal registration and may be more likely to enforce their intellectual property rights. In addition, having a federal registration also confers advantages in litigation, especially as a prima facie case of ownership, which can also help resolve disputes quickly before they end in litigation. After five years of registration, you will also be able to benefit from the “incontestability” of the mark, which limits the grounds on which third parties can contest your rights in the mark.
Finally, if you sell products online and want to participate in Amazon’s trademark registration program, you must have an active federal trademark registration to do so.
Choose a brand
If you are just starting your business or have not adopted a brand, there are a number of factors to consider when choosing your brand. First, you need to create a list of potential, unique and creative candidate brands. Consider the nature of the candidates’ scores, including the relative strength of each option. A strong or distinctive mark is generally easier to register and protect than a descriptive or generic mark.
Under the law, brands are classified according to a spectrum of strength, ranging from non-protectable (generic brands, such as ESCALATOR for escalators) to weak (descriptive brands, such as COLD AND CREAMY for ice cream) to moderately strong (suggestive brands, such as like NETFLIX for streaming services) to strong (arbitrary and fanciful brands, like AMAZON for online services and DASANI for bottled water).
It is best to avoid generic and descriptive brands. Suggestive marks are often a great choice: they are both moderately strong and marketable because they suggest to consumers the nature of your product or service. Arbitrary and fanciful marks are the strongest marks under the law, but may be more difficult to market than suggestive marks since they have no inherent meaning or connection to the products being sold. Therefore, it may be necessary to spend more money, time, and effort educating consumers about the relationship between an arbitrary or fanciful mark and the brand’s owner’s products.
Perform a search
Once you have identified a few viable trademark options, you need to consider whether other parties are using the same or a confusingly similar mark. You or your lawyer should (1) search the USPTO database for pending and registered trademarks, (2) search the Internet for common law uses, and (3) verify hashtags and identifiers on social media platforms. If you plan to operate a website or social media account, make sure that the desired domain name and social media credentials are available before choosing your brand. Once you’ve selected your brand, work with an intellectual property lawyer to prepare your application. They can help you write an appropriate description of the goods / services and identify an acceptable specimen.
Once you have obtained a federal registration, it is important that you implement a maintenance program to protect it. Display the trademark symbol “®” when you use your mark in commerce. Keep records of your brand-related issues, including advertising and packaging samples and copies of correspondence with suspected infringers. Your registration can last indefinitely if you continue to use your mark commercially and renew it when necessary. Lanham Act (the Federal Trademark Act) requires trademark owners to renew their registration (s) between the fifth and sixth anniversary, the ninth and tenth anniversary, and every ten years thereafter. 1 Finally, you should monitor the market for counterfeiters by frequently researching or employing a third party watch company.
With proper planning and research, you can achieve a trademark registration that will not only be a valuable business asset and symbol of goodwill, but will also gain value over time as your business reputation grows. .
Originally posted by NJBIZ the 24eof May 2021.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.