The name of your product or service is among your company’s most valuable assets. Good trademarks establish brand equity and distinguish your products or services from others in the marketplace. In fact, the single largest source of a company’s intangible value (i.e., its goodwill) is often its trademarks. For example, the Google trademark was worth an estimated $120 billion in 2015.
Trademarks are source indicators for your products or services. They tell people who buy your products or services where they came from and lets them know what quality they can expect when they buy them. Because owning a trademark gives you the exclusive right to use that trademark on your products or services, trademarking your product or service name is one of the best ways to protect the goodwill in your business you’ve worked so hard to build.
Understanding the Elements of a Trademark
The first step in trademarking your product or service name is to come up with something distinctive that helps sets your product or service apart from others. Understanding what items can be a trademark will help you with this step:
- Words. Coca Cola soda; Kodak film
- Names. Ford automobiles; Pierre Cardin fashions
- Symbols. The Nike Swoosh; Microsoft’s Windows Flag; the Jolly Green Giant
- Logos. Ford’s blue and white oval Ford logo; the Pepsi swirl
- Package Designs and Product Configurations. Coca Cola’s classic bottle shape; Kodak’s Film packaging
- Sounds. The NBC chimes; MGM’s Lion roar
- Scents. Floral-scented sewing thread
- Colors. Owens-Corning pink fiberglass insulation
Choosing a Strong Trademark
Next, choose a strong trademark. The stronger your trademark, the more likely it will be approved for registration by the United States Patent and Trademark Office (USPTO), and the easier it will be to enforce your right to its exclusive use against others. “Strong” means how likely a purchaser of your product or service will view your trademark as an indicator of the source for your product or service.
Trademark strength is composed of four categories; from strongest to weakest:
- Coined or fanciful
Coined or fanciful trademarks are invented words with no dictionary or other known meaning (e.g. Xerox). Arbitrary trademarks have a known meaning, but the meaning isn’t related to the goods or services being protected (e.g. Apple for computers). Suggestive trademarks suggest but don’t describe qualities of, or a connection to, the goods or services (e.g. Coppertone for suntan oil). Descriptive trademarks describe the goods or services being sold and therefore aren’t inherently distinctive like the other trademarks described above are likely to be (e.g. “Creamy” for yogurt).
There are also generic terms (they don’t qualify as trademarks in the legal sense), which are far weaker than the other four categories because they are simply the common, everyday name for goods and services that everyone has a right to use (e.g. “Bicycle” for bicycles). Generic terms can never be trademarks.
Performing a Trademark Search
Once you’ve chosen a name for your product or service, you need to make sure you perform a thorough search of that name before you file your application for registration with the USPTO. A trademark search is important to make sure that your trademark is available for use and is registrable with the USPTO. This includes determining whether anyone else came up with your name before you did and used it in the marketplace. It also includes identifying potential problems such as a likelihood of confusion with a prior registered trademark or with a trademark in a pending trademark application. Finally, a trademark search may show you whether your trademark, or part of your trademark, appears as generic or descriptive wording in another trademark registration, which may indicate that your chosen trademark is weak or difficult to protect.
Although you can perform a trademark search using the USPTO’s search tool (Trademark Electronic Search System or TESS), this may not be enough to ensure that there are no trademarks similar to yours. A search on TESS is limited to the USPTO’s database of federal trademark applications or registrations—it doesn’t include trademarks of other parties who may have trademark rights, but no federal registration (also known as common law trademark rights). Also, trademark searching is not easy—it’s tempting to assume that because searching the web has become part of our lives, searching for a trademark is as easy as searching for a recipe or finding facts on Wikipedia for a book report. This is not the case.
Trademark searching can be very complex. A search for a trademark involves analyzing such things as sound and meaning, the inherent distinctiveness (or lack of distinctiveness) of a prior trademark, as well as other factors courts use in determining whether a proposed trademark infringes a pre-existing trademark. That’s why having an attorney who has expertise in trademark law, as well as access to robust trademark research tools, can help to more accurately determine the distinctiveness and registerability of your chosen product or service name. This can save you time and money in avoiding submission of a wasted trademark application.
Filing a Trademark Application
Once a full and comprehensive trademark search has been performed on your chosen product or service name, you need to file an application to register that name as a trademark with the USPTO. This application must be filled out completely and accurately. Any mistakes in an application may cause delays in processing, result in requests by the USPTO for further clarification, or even cause rejection of your application.
A trademark application which is complete and makes it through the USPTO will be reviewed and vetted by an examining attorney at the USPTO. The examining attorney will review your proposed trademark to ensure that it doesn’t bear any similarity to, or cause confusion with, an existing trademark. The examining attorney may also have questions about your proposed trademark and/or request additional information. Registering a trademark is a time-consuming process, and there is often a long backlog of applications which makes the process even longer. Responding promptly to the examining attorney’s questions and requests for information is vital to ensure that your application keeps moving along.
Finally, after your trademark application is approved and your trademark is registered, you can put the public on notice of your registration. This means that you can use the small circled “R” with your product name which indicates to the public that your trademark is a registered trademark.
The steps described in this post are sometimes complicated and can take many months to complete—it normally takes eight months from the filing of a trademark application to receive final registration. If you are unsure of how to trademark your product name, your best option is to get help from an expert trademark attorney.
Becker Law LLC can assist you in registering an appropriate trademark to protect the goodwill your business has worked so hard to build. Contact us today to learn more.