What is a trademark and how does your business get one?
What is a trademark?
A trademark is a unique symbol, word, phrase, design, or combination of these that helps identify and set apart the goods or services of your business from others. Think of it as a badge identifying your brand.
Legally speaking, it is a type of intellectual property that gives your brand legal protection to ensure others can’t use similar identifiers to trade off your reputation and confuse your customers.
Trademarks are the key to keeping your brand strong and recognizable.
How do I get trademark rights?
Use it or lose it. Trademark rights come from your use of the mark to sell something (in legal terms, use “in commerce in connection with specific goods or services”).
Using your trademarks and connecting them with your goods or services—assuming your trademark isn’t so similar to another business’ that it would cause confusion and step on their rights —establishes your legal rights. Lawyers call this “common law” trademark rights. Common law rights give you some legal protection even if you haven’t formally registered the trademark. But, if you want stronger, nationwide protection, you should register your trademark with the United States Patent and Trademark Office (USPTO).
The “strength” of your trademark is very important. Trademarks that are considered “strong” drive:
- How much protection your business gets when someone comes along and uses a similar trademark for their business;
- how much you can rely on your trademark to set your business apart from another’s; and
- whether you can register your trademark.
Legally, trademarks are sorted into five categories based on their strength.
From the most protectable to the least, here are the categories:
Fanciful Trademarks
These are made-up words or terms that have not existed before they were associated with a business. Examples include “Exxon” or “Xerox.” Fanciful trademarks are highly distinctive and enjoy the strongest level of protection under American trademark law.
Arbitrary Trademarks
These trademarks use existing words that aren’t logically connected to the product or service they represent. An example is “Apple” for computers. Because of their unusual application to identify the goods or services sold under them, these marks are also highly protectable.
Suggestive Trademarks
As you may guess from the name of the category, these trademarks hint at the nature or quality of a product without directly describing them. For example, “Netflix” implies a connection to streaming or movies, even if you have to make a mental leap to associate the name with the service.
Suggestive marks are still considered inherently distinctive and typically receive strong protection from courts.
Descriptive Trademarks
Descriptive trademarks actually describe a characteristic, feature, or quality of the product or service. An example could be “Superior Automotive” for an auto parts store. These marks aren’t inherently distinctive and only work (get legal protection as a trademark) after customers begin to associate the trademark with a particular business’ brand over time (in lawyer-speak, after they “achieve secondary meaning”).
Picking a descriptive trademark can be a trap for a new business. Choosing a brand name that helps your customers immediately understand what you are selling likely will help you make early sales. But, in the long run, you may not be able to make your “Superior Automotive” business stand apart from the auto parts store down the street that advertises that it has “superior quality” car replacement parts.
Generic Terms
These are the common names for a product or service, such as the word “apple” for the fruit. These terms can’t be protected for one business because all businesses in the same industry need to use that word to describe their products or services. You cannot register a generic term as your trademark for this reason.
How should you choose a trademark?
Do your research ahead of time so you don’t get bogged down later by competitors who either accuse you of improperly using their trademarks or using your descriptive mark to try to attract your customers.
Look for a strong, distinctive mark—something fanciful, arbitrary, or suggestive—to give yourself solid legal protection and stand out in the marketplace on day one.
To make sure your chosen trademark doesn’t confuse consumers or accidentally step on someone else’s rights, do a “trademark search and clearance”—in other words, check to see if your great identifier is already taken in the market you are moving into.
The process starts with a comprehensive search to spot any existing trademarks that could conflict with yours. You can search databases like the United States Patent and Trademark Office (USPTO) Trademark Electronic Search System (TESS) or work with professional trademark search firms.
It’s essential to check not only identical trademarks but also similar ones that might create confusion between your business and others. Once the search is done, if no major issues pop up, you’ll feel more confident moving ahead with using your preferred new trademark. If there are concerns, it might be time to brainstorm some new ideas for your trademark.
For extra peace of mind, it’s usually a good idea to bring in a legal professional to help interpret the search results and guide you on the best next steps. This can help you avoid potential legal headaches or challenges later on.
So you’ve picked a trademark. How do you register it to maximize your rights?
Once you’ve chosen a trademark, you should register it to get the most legal protection. If you own a business that operates or advertises across multiple states, register with the U.S. Trademark Office. If you only operate within a single state, register with your secretary of state’s trademark office.
For those who want to register with the U.S. Trademark Office, the application process is online and fairly straightforward. To begin, you’ll need to clearly identify your trademark and specify the goods or services associated with it.
If you haven’t started selling your goods or services yet, you can file an “intent-to-use” application. This allows you to reserve your trademark for up to three years until you’re ready to use it in commerce.
If you’re already making sales, you’ll need to provide the date of first use in commerce and submit a “specimen of use”—a sample showing how your trademark is actually used to advertise or sell your goods or services.
Once submitted, your application will be reviewed by a “trademark examiner.” The examiner’s primary job is to check that your trademark doesn’t conflict with existing registrations or risk confusing consumers. Examiners also want to confirm that your application gives a clear and precise description of the goods or services that you are branding with your trademark.
Additionally, the examiner will evaluate whether your trademark is a generic term for the listed goods or services or if it’s “merely descriptive.” Generic terms cannot be registered, and descriptive marks require evidence showing that consumers recognize the term as a trademark rather than just a description or promotion of the product.
If the examiner identifies issues with your application, you’ll receive an official letter outlining the reasons for refusal. At this point, you can respond with arguments or amendments to address the concerns and strengthen your case.
If you convince the trademark examiner, it will be approved by the examiner and then enter the “publication” phase. Each week, the U.S. Trademark Office releases a list of newly approved trademark applications. This allows the public to review them and identify any that might cause confusion—something the examiner may have missed. If an existing trademark owner believes your trademark could harm their brand, they have 30 days to file a legal notice that they oppose registering your trademark. This initiates a formal dispute, akin to a mini-lawsuit, to decide whether your trademark should be registered.
While trademark oppositions are not common, they do occur. To minimize the risk of refusals or oppositions, it’s highly advisable to conduct a thorough trademark search and clearance process before selecting your trademark and submitting an application. Taking this step can save you time, effort, and potential legal challenges down the road.
After successfully navigating the examination and publication process, your trademark will be officially registered. You will receive a formal registration certificate that includes your U.S. Trademark Registration Number.
Conclusion
Registering a trademark involves a straightforward yet crucial process. It begins with choosing a strong, distinctive mark, followed by conducting a thorough search to ensure there are no conflicts. Next comes preparing and submitting your application for review by a trademark examiner.
Along the way, you may need to address objections and sweat out the 30-day public objection period after trademark publication, but these steps are all part of the journey.
If you can overcome these challenges, you’ll receive your official registration certificate and legal protection and exclusive rights under federal or state registration system that you are operating under.
Hopefully, this helps you understand this important step toward strengthening your business and brand!
Lapple Ubell IP Law is an intellectual property law firm based in Irvine, California, dedicated to helping clients protect, manage, and enforce their innovations and creative assets. The firm provides strategic counsel on patents, trademarks, copyrights, and related IP matters for businesses of all sizes.
The author, Matt Lapple, is an experienced intellectual property attorney and a past-president of the Orange County Intellectual Property Law Association. If you have questions please contact Matt at matt@lappleubell.com or 949-756-4889.
