What do you need to know?
This outline should cover the basics for what you need to know to get started building your IP (that means Intellectual Property) portfolio. A trademark is just one tool in that intellectual property toolbox to build your brand and protect the innovative aspects of your company.
Here is what I cover in this post:
What is a trademark?
The purpose of trademark law is to protect the consumer by ensuring that they know the source of the goods and services they purchase. Companies use trademarks to prevent others from benefitting from their goodwill and reputation in the marketplace.
A trademark can cover anything that is used to inform customers about where a product or service comes from. For example, trademarks may include a company name, a product name, a logo, the appearance or shape of a product or package (like a bottle in the shape of an aproned woman), a jingle, a color scheme (like brown for delivery trucks or red for a sole of a shoe), or specific movement or functions (like vertically opened car doors), or many other characteristics.
A trademark permits the trademark owner to prevent others from using confusingly similar identifiers that confuse customers into thinking that the trademark owner is the source of goods of another (or vice versa - that another company is the source of the trademark owner's goods). Each government grants its own trademarks and will provide similar rights for their respective jurisdictions.
What are the types of trademarks?
There are a number of tools in the IP TechBox in order to provide alternatives to protect a company's brand, or the reputation of a company's products or services.
Although technically different categories, these alternatives are all referred to as trademarks generally. I will likely also refer to these alternatives as trademarks as well for ease, unless it is important to make a distinction. They are presented here separately so you are aware of the different ways marks may be used to your advantage.
Trademark
A trademark is any word, name, symbol, device, or any combination thereof used by a person to identify and distinguish their goods from others. Goods for a trademark are covered by international classes 1-34 (I will explain classes later).
A trademark is identified by a superscript TM near the mark, usually right after its use.
Service mark
A service mark is essentially the same as the trademark, but instead of covering goods, it is for services. Services for a service mark are covered by international classes 35-45.
A service mark is identified by a superscript SM near the mark, usually right after its use.
Trade Dress
Trade dress is how a product, or its packaging looks and is unique to the company selling the product. Trade dress can be a very powerful tool to protect a brand as it can be recognized by consumers, even if a label with the company name has been removed or is not viewable by a consumer.
A trade dress is not immediately recognized by a consumer when it is first used. The company must therefore educate their customers to make the association between the appearance and the provider of the goods. The selected shape of the trade dress must therefore be distinctive so that consumers can recognize it and distinguish it from other products.
What makes a strong trademark?
The strongest trademarks are those that are the most distinctive. The more unique the trademark, the easier a consumer will be able to recognize the source of the goods. Also, if another company comes to market with anything resembling a name (logo, or other recognizable feature) that is really unique that is already on the market, it is easier to prove they did so to garner the goodwill that has been establish by that previous company and show confusion between the marks. Essentially, the more unique the name, then the more protection the company is likely going to obtain.
Below are classifications used to describe trademarks to illustrate the correlation between the uniqueness of a trademark and its strength:
Fanciful
A fanciful mark is used to describe a trademark that is essentially a made up word. The word will have no meaning to a consumer except to identify the source of the goods in which it is used. The Fanciful mark is the strongest trademark. Some examples in this category include Kodak, Exxon, and Chlorox.
Arbitrary
An arbitrary mark is a word that already exists in a language, whether English or another language. However, the word is wholly unrelated to the goods or services that are being offered. These marks still provide strong protection because a competitor is not likely to use a similar mark except to take advantage of the market reputation of the previous company. Some examples in this category include Apple for electronics, Dove for soap, or Shell for gas.
Suggestive
A suggestive mark is where the goods or services are related to the words of the mark, but the mark is not an actual description of the products or services being sold under the mark. This category of mark is not as strong as arbitrary or fanciful marks because when the mark is used, consumers may think of the goods and services and not the source or provider of those goods or services. Examples of suggestive marks include airbus for airplanes and Netflix for streaming movies. Although neither actually describes what is being provided, once a customer hears the name, they may have an idea of what is being sold.
Descriptive
A descriptive mark is, as it sounds, descriptive of the goods or services associated with the mark. A descriptive mark is a very weak mark. A customer will not be able to tell the source of the goods by hearing or seeing the mark simply because it is a description of the goods being sold. A mark may be descriptive if it describes the product or service or any ingredient, quality, characteristic, function, feature, purpose or use of the product or service. An example of a descriptive mark is edible arrangements for decorative arrangements of fruit made to look like bouquets.
A descriptive mark is usually not provided trademark protection. However, a descriptive mark may be registered if the mark owner can show consumers do recognize the name and associate it as a source identifier. The biggest problem with descriptive marks is that even if the mark owner can get a trademark registration, they will not be able to stop others from describing their goods even if that happens to include the mark itself.
Generic
Generic marks are the name of the goods or services. Generic marks cannot be used as a trademark or obtain trademark protection.
What is there to consider in selecting a trademark?
There are a number of factors when deciding on a mark. The primary tradeoffs are having a name that will provide the broadest and strongest protection against competitors (i.e., the fanciful or arbitrary marks) while conveying to your customers what is being sold (descriptive or suggestive marks). Having a stronger mark usually means more investment in marketing to educate customers on who you are and what products or services you are providing. But, the more descriptive the mark, generally the less protection will be provided, which permits others to benefit from your investment into your brand's reputation. Therefore, you may consider bringing the two together: use a stronger brand name but a descriptive catch phrase, logo, or tag line that will inform your customer base of the products (or services) being provided.
Other considerations in selecting a mark include:
How does it translate into other languages?
Do any of the words or sounds have cultural implications to avoid?
Is a top-level domain ( i.e. the website) available for the name?
How will the name likely evolve over time, such as by becoming an abbreviation or words dropping off, and ... are there any problems (ask these questions again for the short name)?
What are the same or similar uses of the name in the marketplace?
Do I have to obtain a trademark registration?
No, but it is still a good idea.
Once a mark is in use (being observed by customers in association with specific goods and services), then the company can assert rights. However, having a federal (and sometimes state) registration can provide many substantial benefits. These include:
National protection - a trademark based only on use and not a federal trademark filing gets protection only in the geographic areas where it is used. This means a competitor can have a similar name somewhere else that may limit the your ability to expand or create problems if you want to sell your company to someone else that is interested In those other areas.
Statutory Damages - sometimes, the hardest part of a case is to determine how much a knock off has actually damaged the company and its reputation. For federal trademark infringement, the injured party can obtain statutory damages. This can be used to essentially set a floor on the potential recovery, making enforcement viable for a company.
Treble damages - additional damages may be awarded for egregious and willful infringement.
How long is a trademark good for?
Generally, a trademark is good as long as it is being used. However, in order to maintain a federal trademark registration, you must periodically show that the mark is in use and pay a fee. This is done generally at five (5) and ten (10) years and every ten (10) years thereafter. State registrations may also have different requirements and timing to show use.
What about protection in other countries?
Many companies are interested in selling their products in other countries or looking to exit the industry by selling their company to a competitor or partner that may be located in or interested in sales in other countries. A trademark application may be filed in any other country that has a trademark office.
Generally, an Applicant can link trademark filings so that a later filed application can be treated as if it were filed at the same time as an earlier application. Generally, the deadline to file a later application in another country is six (6) months from the date of the first filed application. However, each trademark application is considered based on only the other marks within that country. Therefore, having a mark in another country will not prevent that mark from being filed in a foreign jurisdiction, even after the six months to relate the applications together. A company delaying foreign filings beyond the six months run the risk someone else may have filed the mark (or a similar mark) in the time between the original filing and the later foreign filing that may prevent them from receiving a registration in the foreign country. There is always the tradeoff of protection to the associated costs in filing additional trademarks in foreign countries.
What is the process for getting a trademark?
The process starts by determining what goods or services your mark is going to be sold with. A trademark attorney can assist in describing your goods and services. The application is then filed at the trademark office. A trademark examiner conducts a search to determine if there are any other marks that were filed before yours that are likely to be confusingly similar to customers, and whether other parts of the application, like the description of goods and services are okay. There may be some back and forth with the Examiner to get the application in condition for allowance. Then, the mark will register if it passes the requirements, and the applicant shows use of the mark.
When should a trademark be filed?
Many foreign countries are under a first to file system. T
his means that whichever company files first will have priority to use the mark. The United States provides some benefits for the first to use the mark. However, it is still advisable to get a new mark filed as soon as possible to prevent others from obtaining superior rights or in limiting your rights that would be obtained only by using a mark.
When to use TM/SM and (R)?
It is a good idea to indicate that a mark is intended as a source identifier. Once the mark is in use with customers, then a mark owner may indicate its intent to protect its brand. The mark owner may use a TM or SM whether the mark is used with goods or services. The mark owner can use a superscript of TM or SM usually at the end of the mark or otherwise near the mark. Only once the mark is filed AND registered can a mark owner use the R in the middle of a circle. If the mark owner uses the circle-R before registration, the mark owner may have to deal with adverse consequences.
Where to find more resources?
The United States Patent and Trademark office provides very good resources to provide similar information to what is provided here, as well as additional resources.
You can find additional resources here:
For additional basic information: Trademark basics | USPTO
For USPTO trademark searching: Search trademark database | USPTO
International Trademark Information: Trademarks (wipo.int)
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