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Trademark

Why You Should Trademark Your Brand

 
bicycle seat with business logo etched into the seat
 
 

What is a Trademark?

A trademark is a word, symbol, or device that is used to identify a particular good or service. For example, Nike uses its "swoosh" symbol to identify its shoes. If you walk into a shoe store and see shoes with the swoosh symbol, you would know that the shoe is made by Nike without the need for the shoe to include the words: "Made by Nike." For Nike to protect its swoosh symbol, Nike registered it as a trademark to prevent others from using the swoosh symbol on shoes not made by Nike. Generally, a trademark lasts for as long as the trademark does not become "generic" (described below) or is not abandoned (owner no longer uses it in commerce). Once a trademark becomes generic or is abandoned, it will not receive any trademark protection. However, if the trademark is abandoned, you can later attempt to reclaim it by submitting a petition to revive the abandoned trademark to the USPTO (United States Patent and Trademark Office).

A business typically registers its business name, logo, and any catch phrases as trademarks. Registering them as trademarks allows a business to build a unique brand that consumers can easily identify. There are two main methods for registering your brand as a trademark:

(1) Federal Registration

  • This will protect your mark throughout the U.S.

  • More expensive than state registration

(2) State Registration

  • This will only protect your mark in California and not throughout the U.S.

  • Less expensive than federal registration

What Happens if I Don’t Register My Brand as a Trademark?

If you do not register your business brand (business name or logo), you will still obtain some legal rights to protect it from others using it, which are called “common law trademark rights.” By using your business name or logo, you automatically acquire common law trademark rights. A common law trademark is a mark that is used to conduct business somewhere within the U.S., but is not registered. Technically, you do not need to register your business name or logo as a trademark to own it or protect it as you can still sue for infringement (when someone is using your mark without permission).

However, these common law rights are only limited to the geographic area where you are using your common law trademark. If you plan in the future to expand your business to a different city or state, this may pose a problem to developing your brand there. This is because in the new city or state, anyone else there who does not know your business name or logo can use it without your permission and also claim common law trademark rights to your business name and logo. This will result in the use of your business brand having two owners who are entitled to their own common law trademark rights.

On the other hand, if you register your business name or logo as a trademark, you will be able to reserve the use of it solely to you as you will have either statewide or nationwide rights in the ownership and protection of your brand. If you are serious about building a unique brand for your business that consumers will easily identify as having a good reputation for quality and service, you should register your brand as a trademark.

The Benefits of Federal Trademark Registration

  1. You own the trademark - The primary benefit of registration is that it creates the presumption that you are the valid owner of the mark and the burden of proving otherwise falls on the opposing party.

    • This is extremely useful when you are enforcing your trademark rights by suing the person who is using your trademark without your permission as the person will have to prove in court that you are not the owner of the trademark, which is very difficult to do.

  2. You have the right to use the federal trademark registration symbol (®) - This shows others that you are the registered owner, which will deter others from copying your mark.

  3. Easier to protect your trademark online - Owners of federal registrations have an easier time enforcing their rights over the Internet, including actions against cybersquatters and infringement on social media sites.

  4. Create legitimacy - Federal registration provides more legitimacy and seriousness when making cease and desist letters to infringers and lawsuits against infringers.

  5. Trademark listed in USPTO online database - Listing of the mark in the United States Patent and Trademark Office’s (USPTO) trademark database will make your business brand likelier to appear in search reports and prevent others from attempting to register a similar brand to yours.

  6. Can use trademark registration as collateral for securing loans - A registration makes the trademark more valuable and saleable.

  7. Registration allows your trademark to eventually become "incontestable" - “Incontestable” (immune to challenge on inherent registrability and some other grounds) is available after a mark has been used continuously for five years after registration and the owner files a claim for incontestability under Section 15 of the Lanham Act in the USPTO.

  8. Can record your trademark with U.S. customs - Helps prevent the importation of any infringing or counterfeit products from abroad (at least to the extent that Customs detects them and then seizes the products).

What Type of Business Brand Can I Trademark?

The USPTO will register your business name or logo as a trademark as long as it is distinctive. A business name or logo is distinctive either by: 

(A) Being "inherently distinctive." There are three main categories of inherently distinctive words and symbols.

OR

(B) "Acquiring distinctiveness" through being used. There is one main category of words and symbols that acquire distinctiveness through use. 

Keep in mind that even when you trademark your brand, if the word in your brand becomes generic, then you will lose all trademark protection and you will not be able to have it trademarked at all again. See below for more details on "generic terms." 

(A) Fanciful, Arbitrary and Suggestive Marks - "inherently distinctive"

  1. Fanciful - words invented solely for their use as trademarks (made up words that were created to name a business)

    • Ex. Kodak and Exxon

  2. Arbitrary - common words that is used in an unfamiliar way (it is an existing word that has nothing to do with the goods or service)

    • Ex. Apple Computers (the name makes sense when associating the name for what it is used for); Rockstar

  3. Suggestive - Words that suggest a thought or perception about the goods or services, but does not directly describe the good or service

    • Ex. Klondike suggests the thought of polar bears and being cold in the arctic

(B) Descriptive Marks and Secondary Meaning - "acquiring distinctiveness"

  1. Descriptive - word that describes some characteristic of the product or service

    • Not protected by trademark unless it acquires secondary meaning or acquired distinctiveness. In other words, the word will not be fully protected as a trademark until the word you are attempting to trademark begins to be associated with your product by consumers

    • Ex. Blue color of the name "Qualitex" ; “Cold and creamy,” which can be used to describe ice cream from a particular ice cream shop

What Type of Business Brand Can I NOT Trademark?

You cannot trademark any brand that contains a "generic term" in it. There is no trademark protection at all for generic terms. A generic term is a word that describes the type of goods or services. 

The standard that courts look at when deciding whether a word is or has become generic is the public perception of how a consumer views the word to describe the category of the product

For example, “Aspirin” is a trademark owned by Bayer to describe its pain relieving medicine, but now when consumers say or think of “Aspirin,” they are thinking of pain relieving medicine in general and not the particular one sold by Bayer.

Another example is “App” that was trademarked by Apple to specifically describe their own apps, but is used to describe all smartphone applications. 

However, a word will not be legally generic unless a lawsuit is brought against the trademark word or symbol.

 

*The above article is for general informational purposes only and should not be taken as legal advice. Please contact a business lawyer to find out how any information here applies to your particular circumstances.