Today, we are learning all about trademarks.
What are trademarks? What are the common trademark misconceptions?
Is it even worth trademarking your name and if so, what are the exact steps you need to take to get a trademark?
Keep reading because in this post, we’re going to uncover everything you need to know about how to trademark your business.
Let’s get right into it.
What is a Trademark?
A trademark is a word, logo, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of the others.
Trademarks and issued and managed through the US Patent and Trade Office also called the USPTO.
They are intended to minimize confusion that could happen if two or more businesses have the same name, symbol, slogan, logo, or name.
Trademark Your Business: Why Register For One?
You actually are not required to register a trademark to have some legal protection.
As soon as you begin selling your product or service, you become a trademark owner and can enforce your trademark in court, if necessary.
Simply by using your trademark (your name, your logo, slogan, etc.), you establish rights called common law ownership.
This might make you wonder why people go through the hassle to register a trademark? Why do you need to trademark your business?
Well, the downside to common law ownership and not registering your trademark is that it only protects you within your geographic region.
Which leaves your trademark vulnerable and eligible for use outside your region.
If you open a bakery in New York, common law does not stop someone from opening a bakery with the same name and logo in California.
If you want stronger, nationwide rights, and the ability to sue someone federally for infringement, you want to register your trademark at the Federal level with the US Patent and Trade Office.
Additionally, trademarking your brand allows you to defend your brand against counterfeit products, domain squatters, and give you the freedom to use the Registered symbol with your logo.
In total, there are 4 legal reasons, called a filling basis, to register a trademark. You are required to specify the basis you choose on your application.
The two most common bases are:
- Intent-to-use basis
This means your business has not started using your trademark yet. Maybe you haven’t started your business yet but would like to get the application process started.
Note that while you can apply under an intent-to-use basis, your mark will not be registered until you convert the application to one based on the second filling basis – use in commerce.
- Use in commerce basis
This means you are currently using your trademark while selling or transporting goods and services.
Strong vs Weak Trademarks
There are actually different types of trademarks, and depending on the type, it may be easier to get your trademark approved or you may be denied completely.
Let’s explore the different types.
1. Generic Mark
Generic marks actually do not qualify for a trademark, as they are marks that are words and phrases that are commonly used when conducting business in that industry.
For example, the word “water”.
Water by itself could not be trademarked as it is a common noun that should be able to be used by all businesses who sell water.
2. Descriptive Mark
Descriptive marks describe a product or its ingredient, quality, characteristic, function, feature, purpose, or use.
An example would be High Definition for TVs.
In general, descriptive marks do not qualify as a trademark unless it becomes so popular and distinguishable that the word becomes a secondary meaning for the brand.
An example of where this has worked is the “Sharp” brand of televisions.
3. Suggestive Mark
Suggestive marks “suggest” something about the product or service without actually describing the product or service.
Examples include Airbnb or the car company Jaguar. For this reason, suggestive marks generally do qualify for a trademark as they are not common nouns.
Going back to Jaguar as an example, a jaguar suggests speed and sleekness but most people do not think of a car company when they hear the word.
4. Fanciful Mark
Fanciful marks, also known as coined marks, are words or phrases that did not exist before.
Because of this, Fanciful marks are the easiest types of marks to obtain and offer the widest net of protection.
Nike or Google are amazing examples of a fanciful mark.
5. Arbitrary Mark
An arbitrary mark is a word or phrase that includes a common phrase but not one that is associated with an attribute of the brand.
Think about the term Apple. Though the word is common, it has nothing to do with computers. Arbitrary marks are also easy to obtain.
Then there is the special category and type of mark called the…
6. Service Mark
A service mark is similar to a trademark but distinguishes businesses that provide services.
Many companies such as Apple or Starbucks will have both a service mark and a trademark as they provide products and services.
7. Other trademark types
- Certification marks that show products, services, or goods have met a standard, and
- Collective trademarks that indicate membership in a group or distinguish products and services of members from non-members.
Other Unacceptable Trademarks
Now let’s briefly talk about the things that can not be trademarked!
As mentioned previously, generic trademarks are words or phrases that are used commonly when conducting business in that industry.
As an example, Ben and Jerry’s can’t trademark the word ice cream.
You are not able to trademark a word or phrase that is already a registered trademark within the same class of products or services.
For example, multiple pizza businesses are not able to register the name Domino’s, but both Domino’s pizza and Domino sugar can trademark the word Domino as they are not in the same class of products and services.
- Similar unregistered trademarks
Even trademarks not registered are often recognized by the federal government.
Once again, the goal of trademarks is to limit confusion and if another business in your industry or state has the same name, your trademark application can be denied.
Steps On How To Trademark Your Business
Step 1: Determine Approval Eligibility
Consider the trademark category you are applying for to determining the likelihood that you will be granted a trademark.
In general, marks that are unique and descriptive have the best chances.
The last thing you want to do is spend the time and money on the application only to be denied or not have the protection you hoped for.
Step 2: Perform a Search
You will first want to search through the Trademark Electronic Search System (TESS) and review current trademarks to make sure your name or logo is not already trademarked.
Or there is not another that is extremely similar to yours. If it is, your application will likely be denied.
Step 3: Apply For A Trademark
Once you are sure a similar trademark is not already registered, it is time for you to apply for a trademark.
If using the Use in Commerce basis, the trademark application will have 5 requirements that must be met:
- The following statement: “The mark is in use in commerce and was in use in commerce as of the application filing date;”
- The date of first use of your mark anywhere on the goods or in connection with the services;
- The date of first use of your mark in commerce on the goods or in connection with the services;
- One “specimen” or proof for each class showing how you use the mark in commerce with the goods and/or services, and the following statement: “The specimen was in use in commerce at least as early as the application filing date;” and
- Verification, in an affidavit or a signed declaration that the statements made, are true.
If using the Intent-to-use basis, it is a requirement that the trademark application must include a statement, verified with an affidavit or signed declaration that the
The applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.
If you’d like a complete breakdown of the entire application process, you can visit this USPTO web address here: https://www.uspto.gov/trademarks/basics/teas-nuts-and-bolts-videos
Step 4: Check the Application Status
Once you apply, you are able to check the status of your application by using the Trademark Status and Document Retrieval (TSDR) system.
It typically takes between 6 – 16 months for approval, so it is best to check on the status of your application at least every 3 months.
Well, there you have it, how to trademark your business!