Building a brand for your business is an important step in helping potential clients and customers decide if what your business offers is right for them. In addition, after the conversion of a potential client or customer comes to pass, your customer will depend on what it knows about your company when deciding to do additional business with it. Your potential customers have certain requirements that need to be met before they decide to begin that relationship, and each customer has his or her own unique needs. For instance, shoppers can certainly purchase clothing at any number of different stores, but depending on their perspective, budget, and preferences (requirements and needs), they are likely to choose one store over another. For the fashion-conscious, Walmart® might not be the first choice when deciding where to shop for clothing. However, if low cost is what the customer seeks above all else, than Walmart might be the perfect fit for what they need.
Trademarking is one way help differentiate your company from your competitors and to help communicate to your potential customers that what you offer fits their needs and wants. Because of this, obtaining a trademark and using it in your marketing plans and advertising can go a long way in helping your company become profitable. So, how do you trademark your business or product name? The diagram above loosely explains the process, however, before you obtain your trademark, several key considerations must be taken into account. Below are some things to think about and some common pitfalls encountered when attempting to register your trademark.
How strong or "distinctive" is your mark? The more distinctive, the greater the protection afforded your mark. Trademarks can be classified in the following categories from least protected to most protected.
Generic- These terms are not protectable because it identifies the product or service name and not the source of the product or service.
Descriptive- This type of mark describes a product. If a competitor would need the word to describe their own product, it would be considered a descriptive mark. These marks are usually not protectable until they have acquired "secondary meaning". To show secondary meaning, the examiner would inquire into such things as the length the name has been in use, the amount of advertising, what consumer surveys might say, exclusivity of the mark and other factors.
Suggestive- A suggestive mark brings to mind a trait or element of a product or service without describing it. In other words, a consumer would need to use his/her imagination to understand the nature of the good or service (e.g., Coppertone® for tanning lotion). This mark may be considered weak, but is still inherently distinctive without need to show secondary meaning.
Arbitrary- These marks consist of an actual word, but its use is such that the word is unconnected to the product or service that it represents. Amazon® as a trademark for an online marketplace or Apple® to describe the source of computers, are but two of many examples.
Fanciful- These marks are names that do not exist in common language. Kodak® is one example of a fanciful mark. Fanciful marks are afforded the highest levels of protection.
Other questions to ask yourself are:
Is the mark registerable? See above for generic and descriptive marks. Also, surnames and deceptive names are not registerable as well as phrases and slogans.
Is it similar to an existing mark? Not only do you want your mark to be distinctive, but if your mark is similar to a famous mark, even when your mark is used for a different class of goods or services, it might still be infringing the famous mark. Famous marks are provided very strong protections against infringement.
Is your mark currently in use? There are two different ways to register based on whether your mark is currently in use or will be in use. An Intent-To-Use basis would be filed for marks not yet used in commerce. these applications require special considerations before filing. Please contact our office for more information.
How much formatting or stylization should you have when describing the mark? It may seem that to make your business distinctive, you should claim certain fonts and colors for your mark. However, this decision should not be made lightly. Choosing styles, fonts and colors for your mark will certainly make it distinctive, but it could also pigeon-hole your mark and relegate it to only being used in such a way as described. if later on tastes change on style or font or you decide to go with different colors, you may have to file for a new registration. Even worse, a competitor or other business may be able to use a similar mark with different style, font or color, thus making your mark less distinctive.
The trademark search process begins with performing a proper trademark search. The type and scope of the official search that should be undertaken really depends on the scope of your business, and its' future plans. However, in every case, before money is spent, it is a good idea to perform a preliminary search to rule out obvious impediments to the use of your mark. Once a preliminary search has been performed, a full search can be conducted. This search involves use of the Internet, review of individual state databases, searches in national databases such as the USPTO website, domain names, company names and DBA's. Once the search is complete, an attorney can draft an opinion letter as to the likelihood that use of your mark will pass registration and not be opposed by other parties.
The trademark application process begins with the filing of an application (usually online) with the USPTO. Care must be taken to ensure that the application is filled out in compliance with all USPTO rules and regulations, and that all the required documents and specimens have been provided in the proper format. If that is not done properly, your application may receive an Office Action directing you to comply with the requested issue and failure to do so will result in a dismissal of the application.
The trademark examination process begins when an examining attorney reviews the application for compliance with USPTO rules. The examiner will use the Trademark Manual of Examining Procedure (TMEP) for guidance while reviewing the application. Again, if the examiner spots an issue with information in the application itself, or with any concerns regarding the registrability of the mark, the examiner will send an Office Action explaining the issue with the application. These Office Actions may include a refusal to register the mark, with the basis for refusal therefore, may request additional or clarifying information before making a determination on the application, or may request an amendment to the application before the examiner will preliminarily approve the application for publication in the Trademark Official Gazette. If the Office Action is not addressed or not addressed to the satisfaction of the examiner, the application will be refused. Therefore, it is imperative that the response to such a letter be timely and detailed.
The publication process begins after the trademark examiner has preliminarily approved the application. This publication provides the details of the application and mark and allows third parties to review any proposed mark and have a chance to object to its' registration based on any number of of reasons. Third parties have 30 days from publication in the Gazette to object to the registration of the mark through a "Notice of Opposition". If an opposition is filed, a review will take place which is held before the Trademark Trial & Appeal Board and a decision made regarding the opposition. If there is no objection, the mark will be registered and you will receive notice and a certificate of registration from the USPTO.
Trademark Use and Maintenance
Once the application has been successfully processed and a certificate of registration has been issued for the mark, it is important to ensure that you make proper use of your mark. If used in the wrong way, you could lose important trademark protections. In addition, there are certain statutory requirements to renew a trademark between the 5th and 6th year of registration (Section 8 Declaration), and between the 9th and 10th year at every ten year interval after registration. Trademark maintenance is an important component of protecting your brand and you should consult an attorney on effective ways to do this.
I hope this information has been helpful to you. If you have any questions about the information provided here, or need helping in registering a trademark for your business, feel free to contact Intellequity at firstname.lastname@example.org, call us at 503-877-0881 or book a consult here. Intellequity is Portland's trademark attorney!