It is a word, slogan, symbol, design, color, sound, or a combination of these things. It tells consumers that particular goods or services originate from a particular source. It is vital to your brand identity as it helps distinguish the goods or services of one party from those of another.
It is your trademark. And you want a strong trademark.
Some strong, and well-known trademarks, are logos (Apple for computers); sounds (MGM’s roaring lion); and color (Home Depot Orange).
So how do you pick a strong and protectable mark? It might be easy to choose one, but getting your trademarks approved and registered might not be so easy. Not every mark is strong and protectable. Trademarks fall along a spectrum of “distinctiveness” – the more distinctive the mark is to consumers, the stronger and more protectable the mark.
On the flip side of this is the fact that you can’t trademark what it is you sell. A generic trademark is the same exact term as the goods or services that it covers. For example, you cannot trademark the term “beer” to cover the beer you are selling. This is because others in the beer industry need to be able to market their beer using the generic term “beer”.
There are three main categories of trademarks. They are:
- Descriptive. These are weak and generally are not protectable or registrable. A descriptive mark literally describes an essential element of the goods or services it covers; for example, “cold and creamy” for ice cream.
- Suggestive. These are strong and eligible for protection and registration. These suggest a quality or characteristics of the goods or services; for example, “Java City” for coffee bar services.
- Arbitrary or Fanciful. These are the strongest and most protectable type of mark. These marks either do not exist in language, or have nothing to do with the goods or services they cover; for example,“Google” for the online search engine.
Next, how do you protect it? That’s where trademark rights come into the equation. In purely legal terms, trademark rights are the legal interest in a protectable trademark that may permit the trademark owner to prevent others from unauthorized uses of the trademark. Essentially, if you own it, no one else can use it.
The first step in protecting your trademark right is very simple. The minute you associate a protectable mark with your goods or services and begin marketing or selling those goods or services to the public, you are establishing rights in that mark - even if you have not formally registered your mark.
Formally registering your mark with a state trademark office or the United States Patent and Trademark Office (“USPTO”) may be the best course of action for your business, and certainly gives you the most benefits.
And finally, how would you police your mark? Well, whether trademark rights exist only at common law, or via state or federal registration, a mark is only as strong as the owner’s efforts to police and enforce it. As owner of a trademark, you really have to monitor the business activity in your region—including online—for uses that may generate a likelihood of consumer confusion with your protectable mark. If you find a potentially infringing use, you will want to notify the owner of the challenged mark and request that they stop using the challenged mark. If they do not stop using the mark, you may want to consider a lawsuit for trademark infringement.
Bringing it all together: Trademark law is complex. It is recommended that you consult a trademark attorney when choosing, filing an application to register, and policing and enforcing your trademark. It’s the best way to protect your business interests and your brand.
To learn more about this topic in depth, and to explore the benefits to USPTO registration, read the full article. To better understand Trademark Law, call us today at JDSA Law.