A trademark is an important aspect of your business; it plays a crucial role in shaping the customer’s first impression of the services or products offered by the company. A real trademark helps to distinguish you from other competitors and help you stand out. When you select a mark, you are creating a unique asset that will add enterprise value to your line of business for years to come. On the other hand, an unfortunate one will blunt your marketing efforts and leave you in legal disputes. This article will direct you on steps to take and how to choose the right trademark for your product, service or business.
What is a Trademark?
A trademark is a name or anything that distinguishes and identifies the source of services and goods of a particular company. The majority of marks comprise of images, words or combinations of the two, but anything identifying the source of services and products can also be a trademark.
Trademarks are always thought to exist on a single spectrum from the weakest to the strongest. You should consider the associated strengths of different marks. A distinctive and strong mark is quite easier to register and to safeguard from misuse by other traders, and the weaker mark has more challenges to face. They have the following spectrums of strength:
Coined or Fanciful Terms: The strongest trademarks are either invented or coined words that are unique, and they do not describe anything about the service or the product. An example of fanciful marks is VERSION, EXXON, and KODAK. While these marks are difficult for the consumer to remember since they don’t have an inherent meaning, the owners of such have the greatest opportunity since they are relatively distinctive to other kinds of marks in the market. On the establishment of goodwill, coined trademarks are given the broadest scope protection against misuse by third-party entities. They are also easy to register and protect.
The Arbitrary Terms: These are trademarks that consist of words with a common meaning but when applied to the services or business or products they are unrelated to the purpose. The most well-known arbitrary ones include BLACKBERRY for cell phones, SHELL for gasoline, and APPLE for computers or STONE for beer. Like coined marks, commercially recognized arbitrary marks get afforded broad scope of protection from third-party misuse.
Suggestive Terms: A suggestive term suggests features of the service or product, but it does not directly describe it. However, these marks create some imagination, perception and a picture in a consumer's mind about the service or the product. An example of such marks includes AIRBUS for airplanes, GREYHOUND for bus services and SWEETARTS for candy and PLAYBOY for men magazines. Suggestive terms are the strongest types of trademarks. Conversely, there is always a fine line between descriptive and suggestive, so tread carefully.
Descriptive Terms: Descriptive terms are existing words that directly identify with the nature of the service or product without giving the consumer any perception, imagination or thought. It is quite hard to register, and they are granted little or no kind of protection as a trademark. The law recognizes that other businesses with the same concept can use the same words to describe their services or products. However, these terms can have a stronger trademark protection when they obtain a “secondary meaning” through the “acquired distinctiveness”- characteristically by way of having a broad use in the market.
Avoid use of descriptive terms as your trademarks unless you have the strength and enough money to invest over an extended period to establish that you are an individual entity.
Generic Terms: A generic term is a phrase of a common name for a particular type of services or goods, and it cannot function as the original. Examples include “delivery service” or “pizza shop,” "Escalator" and "Cellophane." Generic terms are not protected as trademarks and sometimes the phrase is not clear on whether the term is generic. Avoid choosing words that might be considered generic, as they cannot be registered.
Avoiding Trademark Conflicts
Trademark violation falls on “likelihood of confusion.” This issue is common when dealing with similar services and goods. These conflicts are usually evaluated based on the meaning, sound, and sights. So, your mark should not sound like, look like or connote anything that is confusingly similar to other competitors’ brands. The most famous trademarks are permitted to have a broader form of protection. The owners have the liberty to claim a “dilution” regardless of whether the goods or services are similar to the competitors’. Avoid choosing any marks that are reminiscent to a famous marks.
In most cases, local trademark laws prohibit the use of geographic terms as your mark. A geographic term that describes location or origin of services or goods cannot function as a trademark since your brand competitors also need to communicate the location of their products. An example is a beer company in San Diego or an auto shop in Texas. Geographically misdescriptive terms are legally not allowed to act as trademarks.
Names as Trademarks
The United States Patent and Trademark Office (USPTO) has at least four bars to the registration of names as marks and these include:
- The mark is used as a “primarily merely a surname” including languages other than English.
- The mark is a living individual name; even if it is unique it should be avoided
- The mark falsely suggests connection with a living or dead person
- The mark criticizes a living or dead person, or it brings them into disrepute or contempt
There is special treatment for performing artist names, pseudonyms or authors in the following criteria
- The name is to be used in the series of the recorded works or series of written books
- If there is any evidence suggesting that the name identifies the source of the series, and it does not identify the artist or the author, the trademark may be registered.
A pseudonym name can function as a trademark if it does meet the above criteria. The USPTO avoids making a distinction between assumed and real names.
The Federal Trademark Act prohibits USPTO to register immoral marks. The USPTO states that:
To be measured as “Scandalous,” marks must show “shocking to the core of truth, disgraceful, disreputable, giving offense to the moral feelings of the consumers and the marketplace or the goods and services”. Any evidence that shows a mark being vulgar is sufficient to establish it as immoral.
Merely Laudatory Marks
Wording that looks like merely laudatory (WORLDS GREATEST, THE BEST) cannot be used as trademark. It is a type of language that describes services and goods in a positive light. This is very common in types of services and products that are regarded as “puffery” by law. Consumers are trained to recognize such as an advertising language, brand-identifying, not as a distinct trademark.
Winning a Good Trademark
Perform Clearance Search
Once you come up with a list of potential brands, conduct a search to determine the category it falls under, and whether it is a used or registered mark. Focus your searches on different countries that you intend to sell your services or products in. These searches should be your priority even before you decide to make an investment. You can make the searches on the particular country’s online database available for public use. However, it's important that you use the guidance and help of a local trademark professional to give you directions on the availability of your mark in the given locations. According to your needs, you can conduct a full search that includes trademark registers, the industry database, business name registries and references. This full search gives you a comprehensive range of information on how to choose your mark.
Domain Name Availability
In this world of technology, it is important to have a domain name with a .com extension for your trademark. Avoid using hyphens and misspelling the common names because it can direct your customers to a competitor’s site unintentionally. Register the .org and .net extensions for your trademarks to help reduce the possibility of cyber squatters using your domain name to register other extensions, too.
Register your Trademark
Once you have all the necessary information, you immediately need to register your trademark to receive the best protection for this significant investment you have just added to your business.
Your trademark is a valuable asset that establishes a strong goodwill with your customers. It is vital that you select a protected mark and one that can be registered. It is also important to seek the help of professional attorneys to assist you in the process of properly registering your marks and avoid the pitfalls that are common in the application process. This is one of your biggest investments, choose wisely and invest wisely.
Register a Trademark Today
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