Monthly Archives: March, 2014

Select A Good Trademark For Your Business

A strong trademark can be one of the most important assets owned by businesses and individuals.  Just ask Apple, Coca-Cola, Harley-Davidson, Burton, and myriad others who have built multi-million dollar businesses on the strength of strong, distinctive, trademarks.  Statistics have shown that the average person sees or hears more than 1,500 trademarks each day!  Here are some things to know about selecting a good trademark for your business:

What Is A Trademark?

First, let’s start with the most fundamental concept – what is a trademark?  The main purpose of a trademark (sometimes called a service mark when used with services) is to identify the source of a product or service and to distinguish a product or service from one source from products or services coming from other sources.  Trademarks also promise a certain level of consistent quality for a good or service.  So, to state it simply, a trademark or service mark is a word, logo, design, slogan, packaging design, or any other source indicator (which, in an appropriate case can be sound, color and even scent) which serves as a source indicator for a product or service.

How To Select A Good Trademark – What Are The Best Trademarks?

The best trademarks and service marks do not describe the quality or the goods or services but rather are unique words or phrases used to promote and advertise a good or service.  Think of the Apple trademark – no one associated the word “apple” with computer products prior to its use by Apple.  Trademarks are categorized as Fanciful (meaning that the trademark is not a preexisting word in the language but has been made up for the specific purpose of acting as a trademark), Arbitrary (which are existing words that have no relation to the goods or services), Suggestive (which are words that suggest some attribute of the good or service),  Descriptive (which are words that actually describe the goods or services or a characteristics).  The best trademarks are Fanciful marks or Arbitrary marks.  Suggestive marks generally can serve as good trademarks as well.  Descriptive words may sometimes become trademarks once they become associated in the minds of consumers with a particular product or service.  Generic words (like beer, pizza, etc.) can never be trademarks because they can never serve as a source indicator.

While a Fanciful or Arbitrary trademark is the strongest trademark, such marks can be very difficult to create and develop.  In our experience, businesses trying to develop trademarks most often settle on descriptive or suggestive words for their trademarks.  Because of the potential value of a trademark, and potential negative consequences if an inappropriate trademark is selected, we strongly recommend that a business seeking to develop a trademark consult with counsel with trademark experience at the earliest possible opportunity.

I’ve Selected What I Think Might Be A Good Trademark – Now What?

Before a business embarks on significant use of a proposed new trademark or the significant expenditure of money and resources to develop a new trademark, we strongly recommend that the business retain an experienced trademark professional to “search” the proposed mark to make sure it is not in conflict with any trademarks or business names being used by others.  We can state from our experience with many clients that there is nothing worse than spending substantial money and resources to develop what is believed to be a strong trademark only to later have to change the trademark (and possibly lose the money already spent and have to spend even more money) because the trademark is in conflict with someone else’s mark or name.  There are a number of ways (with varying degrees of detail and varying amount of cost) that a trademark can be searched, but a trademark search is absolutely essential before use.

How Do I Acquire Protectable Rights In My New Trademark – Do I Need To Register?

Unlike most countries in the world, trademark rights in the United States are gained by use of the trademark not be registration.  So, a business will have trademark rights as soon as it starts to use its new trademark.  However, such rights could be limited geographically or in other ways depending on the nature of the use.  Even though registration is not required, we strongly recommend that all businesses who are committing their resources to the development and use of trademarks seek federal registration for their trademarks because federal registration can provide a number of important benefits.  Federal registration of trademarks is done by the United States Patent & Trademark Office.  While filing and prosecuting an application for federal registration may seem simple on its face, obtaining federal registration can in many cases be more involved and complicated that one might think.  Indeed, we often work with clients to try to fix applications that they tried to file on their own but were not filed or prosecuted properly.  Therefore, we cannot recommend strongly enough that a business retain an experienced trademark professional to handle the registration process – there is no question the business will save money in the long run if it does so.

What Kind Of Notice Should I Provide Of My Trademark Rights?

It is important to use a proper trademark notice with all trademarks to provide notice that a business has trademark rights in a particular trademark and to discourage attempted infringement.  If federal registration has been obtained, a small “r” in a circle symbol should be used with the trademark.  If there has not been any federal registration, the business has what are called “common law” trademark rights, which still are enforceable.  In such case, the business should use the small letters “tm” with the trademark.  Textual trademark notices also can be used – just about everyone has seen words to the effect that “____ is a registered trademark (or just trademark) of the _______ Company, All Rights Reserved.”

Please subscribe to our blog and check back with us periodically as we will be publishing other posts of interest regarding interesting trademark topics such as infringement, licensing, unusual trademarks, trade dress, etc. in the coming weeks.

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