THE BENEFITS OF TRADEMARKING YOUR BRAND
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.
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:
Federal Registration - This will protect your mark throughout the U.S, but is more expensive than state registration
State Registration - This will only protect your mark in the state you are applying in and not throughout the U.S., but is 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 will 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
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.
The right to use the federal trademark registration symbol (®) to show others that you are the registered owner, which will deter others from copying your mark.
Owners of federal registrations have an easier time enforcing their rights over the Internet, including actions against cybersquatters and infringement on social media sites.
Federal registration provides more legitimacy and seriousness when making cease and desist letters to infringers and lawsuits against infringers.
Listing of the mark in the United States Patent and Trademark Office’s (USPTO) online database will make your business brand likelier to appear in search reports and prevent others from attempting to register a similar brand to yours.
The ability to use the registration as collateral for securing loans. A registration also makes the mark more valuable and saleable.
The possibility that a trademark may become “incontestable,” that is, immune to challenge on inherent registrability and some other grounds (available after a mark has been used continuously for five years after registration and the owner files a claim to incontestability under Section 15 of the Lanham Act in the USPTO).
Customs recordation. Under Customs regulations, 19 C.F.R. § 133, federal registration allows the owner to record the mark with U.S. Customs to help prevent the importation of any infringing or counterfeit goods from abroad (at least to the extent that Customs detects them and then seizes the goods).
What Type of Business Brand Can I Trademark?
The USPTO will register your business name or logo as a trademark as long if it is distinctive. A business name or logo is distinctive either by being inherently distinctive or acquiring distinctiveness through being used. There are three main categories of inherently distinctive words and symbols and one main category where words or symbols acquire distinctiveness through use.
Fanciful, Arbitrary and Suggestive Marks (inherently distinctive)
Fanciful - words invented solely for their use as trademarks (made up words that were created to name a business)
Ex. Kodak and Exxon
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
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
Descriptive Marks and Secondary Meaning (not inherently distinctiveness)
Descriptive - word that describes some characteristic of the product or service
Not fully protected by trademark law 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. Color (Qualitex) and “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?
Generic words cannot be registered as a trademark. Also, even if your word is already registered as a trademark, that word may still have the possibility of later becoming generic. When your trademark becomes generic, you will lose all protection and you will not be able to have it trademarked at all.
A generic term is a word that describes the type of goods or services. There are no trademark protection for generic terms and once a word becomes generic, that trademark protection is gone. The standard courts look at when deciding whether a word has become generic is the public perception of how consumers view the particular word and see whether consumers associate the word itself to describe the broader category of the goods or services instead of the particular product or service the trademarked word is associated with.
For example, “Aspirin” was a U.S. 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.
Schedule a free phone consultation to determine the strength of the word and/or logo you would like to trademark and how to obtain trademark registration.
DISCLAIMER: The contents of this article represent the opinions of the author and do not constitute as legal advice. Due to the generality of this article, the information provided herein may not be applicable in all situations and should not be acted upon without consulting with an attorney. Neither this article nor any legal analysis, legislative updates, or other content derived from it should be construed as legal or professional advice or as a substitute for such advice. No attorney-client or confidential relationship is formed by the transmission of this article. The choice of a lawyer or other professional is an important decision and should not be based solely upon this article. No representations are made as to the accuracy, completeness, or validity of any information contained herein.
Contact the Law Office of George R. Bravo to find out how any information here applies to your particular circumstances.