Trademarks: Selection and Registration
What is a Trademark or Service Mark?
A trademark is virtually anything that identifies the source of a product or goods. A trademark can be a word, logo, symbol, slogan, color, sound or even a smell! So long as the trademark uniquely and distinctively identifies the source of the product or goods, it is considered legally protectible. A service mark is a source identifier for services, but otherwise is basically the same as a trademark. For convenience, the rest of this discussion will refer to trademarks and service marks as “trademarks.”
Kinds of Trademarks
Because a trademark must uniquely and distinctively identify source, not everything will qualify as a trademark, and not every trademark will be given equal protection. There are four classifications used when discussing trademarks: generic, descriptive, suggestive, and arbitrary/fanciful. A generic mark is a word that is used to describe the type of product itself, such as the words “sandal” or “grocery store.” A generic mark can never function as a trademark because it can never exclusively refer to a single company’s product. A “descriptive” mark is a word that describes some real or purported quality of the product with which it is used, such as “dependable” delivery services or “one-hour” dry cleaner. A descriptive mark generally may function as a trademark only after it has been used and people come to recognize it as a source identifier, usually as a result of heavy advertising. A descriptive mark, even after it has acquired distinctiveness through use, is generally considered weak and is entitled to less protection. A “suggestive” mark, which is considered stronger than a descriptive mark and thus is entitled to protection without extensive (and expensive) advertising, suggests some quality or ingredient of a product. A suggestive mark requires imagination by a consumer to understand its connection to the product or service. Examples of suggestive marks would be SUNKIST® for oranges or MR. CLEAN® for household cleaner. The strongest and most desirable marks are words that are applied arbitrarily or which are invented. An arbitrary mark would be APPLE® on computers. An invented or “fanciful” mark would be EXXON® used with gasoline.
A mark’s classification depends upon the goods or services with which it is associated. Thus, “store” is generic when used with a shoe store, is descriptive when used with a filing cabinet, is suggestive when used with a database management company, and is arbitrary when used with a soft drink. Therefore, just because someone else has adopted a trademark does not necessarily mean that the trademark is unavailable.
The Trademark Clearance Process
Only a trademark that is likely to cause confusion with another’s goods or services cannot be used, and cannot be registered with the U.S. Trademark Office. Consequently, in addition to selecting a mark that is not descriptive, you must ensure that your proposed trademark is not too much like someone else’s trademark for similar goods or services. To eliminate the possibility of confusing similarity when considering trademarks, you can do a preliminary clearance on the Internet or even using the Trademark Office’s searchable database. But these methods are not sufficient to confidently ascertain whether a mark is available for your use. A clearance search must search not only the Internet and the Trademark Office’s website, but also many other sources and databases. Furthermore, a clearance search must be specifically tailored to the goods or services that will be offered with the trademark, otherwise, the search results may be over or under inclusive, and thus less meaningful. Once the clearance search is completed, it must be evaluated by an attorney using the legal definition for “confusing similarity.”
How to Protect a Trademark
Although some legal rights (called “common law rights”) immediately begin to accrue in a mark the first time it is properly used in association with goods or services, additional legal rights are available through registration of the mark. Registration is available with state authorities, the U.S. Trademark Office, and with many foreign trademark entities.
For most companies, federal registration is the most appropriate and desirable method of protecting trademarks. The scope of protection of a federal registration is the entire United States, in contrast to state registrations which protect rights only within the states in which a registration is obtained, or common law rights which extend only to the geographic areas of actual use. In addition, a federally registered mark can be identified by the ® symbol (as opposed to a TM or SM), which standing alone can be a powerful marketing tool. A federal registration prevents others from federally registering marks which could be confusingly similar if used on similar goods, and can provide the owner of a registered mark the right nationwide to stop later users from doing so. There are also a number of procedural benefits if it becomes necessary to enforce one’s rights in a federally registered mark, including the ability to file suit in federal court and the availability of enhanced damages and attorneys’ fees.
A federal registration is appropriate for any trademark that is being used on goods or services offered across state lines. Even if a company thinks it is operating within a single state, there may be ways to obtain a federal registration, and thus get nationwide protection for the mark. Federal law also permits a mark to be “reserved” prior to use, if there is a bona fide intention to begin using it interstate. Accordingly, once a potential mark is selected and cleared, an application should be filed right away.
The Federal Trademark Registration Process
The process for obtaining a federal trademark registration begins with preparation and filing of an application with the U.S. Trademark Office. Once on file with the Trademark Office, the application is assigned to a government examining attorney for review. The examiner will determine if the proposed mark can actually function as a trademark, i.e., it is not generic or merely descriptive. An examiner also will compare the proposed mark to all of the prior registered marks and pending applications to determine if there is a likelihood of consumer confusion between any prior marks and the proposed mark. Once this review process is complete, the examiner will contact the applicant’s lawyer with written findings and offer the attorney an opportunity to respond to any issues that arose in the examination. This correspondence between the applicant’s lawyer and the examiner may continue through several rounds before a mark is finally either accepted or rejected by the examiner.
Is It Worth It?
The failure to properly clear a trademark and obtain the appropriate registration may have dire results for a company. The only way to obtain the protection of a trademark registration is to register with the proper governmental authority. Adopting a business name, and even filing that name with a secretary of state, probably will not secure any trademark rights. If a trademark is adopted without clearance and registration, the company might find itself subject to an infringement lawsuit, may be prevented from expanding to new geographic areas, or could be powerless to stop competitors from adopting very similar trademarks. Absent proper clearance, and notwithstanding the expenditure of substantial money to develop goodwill in association with its trademark, a company may find itself forced to abandon its trademark upon the demand of someone with superior rights, or even to pay “ransom” to an opportunistic competitor or other person who has obtained prior rights in the trademark.
