Top 10 Trademark Questions
July 1, 2016
Top 10 Trademark Questions
1. What is a trademark?
A trademark is anything used to identify the source of a product or service. It can be a word, phrase, slogan, logo, color, smell, sound, shape or packaging design, or a combination of these.
2. What is the difference between a trademark and a trade name?
A trademark is used to identify specific products or services. A trade name is a pseudonym or “fictitious” business name used by companies to perform business under a name other than the registered, legal name of the business. Registering a name as a “trade name” at the state level confers no substantive legal rights; nor is it an indication as to whether that name is available to use. If it is an important name that is also used as a trademark or service mark to identify particular goods or services, it should be cleared and registered with the United States Patent and Trademark Office (USPTO).
3. Should I register the complete legal name of my business with the USP?
Probably not. Legal business names that function solely as such are not registrable as trademarks. If you have incorporated your complete legal name into a logo or are otherwise using it in a way that rises to the level of trademark or service mark usage, you can register that. In most cases, however, companies tend to drop the legal entity identifiers such as “Inc.” or “Corporation” even if their mark otherwise matches their legal name.
4. Are some terms more protectable than others?
Yes. When wording is initially proposed as a mark, it can be categorized along a “spectrum of distinctiveness.” Only wording that is “inherently distinctive” in relation to the goods or services for which trademark protection is sought is protectable immediately upon use and eligible for registration on the USPTO’s Principal Register at the outset. Inherently distinctive marks include suggestive terms, arbitrary or fanciful terms, and coined terms. Wording that is descriptive is not protectable until it has acquired “secondary meaning” or distinctiveness. This category of marks that must acquire distinctiveness in order to be protectable can also include surnames and geographic indications. Generic terms are never protectable as trademarks. (See graphic titled, “Trademarks: The Spectrum of Distinctiveness.”)
5. I searched the USPTO database and my mark is not registered – is it clear to use?
Not necessarily. First, searching using the USPTO’s Trademark Electronic Search System (TESS) generally only reveals direct conflicts. Other marks, such as marks that are similar in meaning, are more difficult to find using a basic search. Second, searching TESS will not uncover marks that are in use, and are therefore protected, but not registered. A comprehensive trademark clearance search is needed in order to uncover unregistered marks that could form the basis of a challenge after you have adopted your mark. Even after you have successfully registered your mark with the USPTO, it is still vulnerable to a challenge from an owner of a prior mark, either registered or unregistered, for the first five (5) years of registration.
6. Do I need to register my trademark with the USPTO?
No. Trademark rights are acquired in the U.S. based on use, not registration. Owners of unregistered trademarks can rely on those rights to challenge use by a third party of a confusingly similar mark. While not mandatory, registration has significant advantages, including conferring the legal presumption that the owner has exclusive rights to use the mark nationwide and providing a deterrence to third parties who are contemplating adopting the same or similar mark.
7. Should I register many similar marks to prevent competitors from using them?
No. It is not necessary or even possible to register multiple marks, or multiple variations of the same mark, for the sole purpose of blocking third parties. An applicant for a mark in the U.S. must either demonstrate use of that mark in commerce, or declare a “bona fide” intent to use that mark and ultimately show actual use prior to registration. Rather than try to meet this standard for multiple marks consisting of similar wording, it is generally best to pick a single variation and focus on protecting and developing goodwill through consistent use of that particular mark. If a third party later adopts a mark that is confusingly similar to yours, you can challenge it based on your rights even if you don’t own an application or registration.
8. What do the “International Classes” mean?
The U.S., and many other countries, classify registered trademarks in one or more international classes. See the World Intellectual Property Organization’s (WIPO) List of Goods and Services in Class Order. The USPTO’s ID Manual can also assist with determining appropriate classification. The classification system generally groups similar goods and services together in the same class. While helpful for purposes of searching across various jurisdictions, the class in which a particular mark is pending or registered is not determinative of the issue of whether there is a conflict. When examining a trademark, the USPTO will not confine its search of prior registrations or pending applications to a single class. The best trademark clearance strategies therefore consider identical marks regardless of class, and also consider similar marks in both the applicable class, as well as classes that include “related” goods or services.
9. Should I register my logo, or just the wording in “standard character” format?
If your budget allows for only one trademark application, it is generally best to file for the wording in “standard character” format. This gives you the broadest protection for the wording because it does not include any claim as to a particular display, such as font, color or size. This also helps prevent a situation where you try to renew your registration after five years but find you cannot because your logo has changed or evolved to the point that it will be considered a “material alteration” of the mark as registered. There are exceptions, for example if your clearance process reveals a mark that contains similar wording but is registered along with a distinctive design or logo that is distinguishable from your logo.
10. Should I use the ™ symbol or the ® symbol?
You should not use the ® symbol until the mark is actually registered with the USPTO, i.e. a Certificate of Registration has been issued. Prior to that, you may indicate that you are claiming trademark rights by using the ™ symbol. If you are using the mark in association with services, you may use the SM symbol instead, which stands for “service mark.”