A trademark is a word(s), a symbol, or a combination of both that identifies a source of a good or service. While some use the term servicemark to identify a mark related to a service, the terms “trademark” and “servicemark” may be used interchangeably.
The primary purpose of a trademark is to protect a consumer from confusion as to the origin of a good or service. Trademark laws also prevent unfair competition in the marketplace and provide rights and remedies to a trademark owner.
A trademark is a valuable asset that can help grow a business. Purchasing decisions are influenced by trademarks and the reputation associated with such brands. Trademarks can make it easier for customers to find you and its protection lasts as long as you continue to use the mark.
Additionally, a trademark can be licensed to someone else if they ask permission and proper documents are filed.
Filing for a trademark is not necessarily difficult. Although, there are a number of things that can go wrong when registering. Errors in an application can threaten the validity of your trademark such as submitting an incorrect specimen or getting your description of service wrong. Using an experienced trademark attorney can help to avoid problems.
Types of trademarks
There are different types of trademark protections. Determining which kind of trademark to use depends on your situation and where you hope to take your business.
To establish a trademark right, all you need to do is use the mark in relation to a good or service. This is known as a common law trademark. While relatively easy to obtain, common law rights are generally limited to your market area. If you don’t plan to go national, this may be all you need.
Another type of trademark is a state trademark registration. While generally governed by statute, your trademark rights are similar to those of a common law right. The main advantage of state registration is that it serves a notice function and hopefully discourages others from adopting a similar trademark.
The broadest trademark protection comes from a federally registered trademark. A federally registered trademark gives you a priority right to use your trademark throughout the entire United States, including areas where you have not entered the marketplace.
Once the mark is deemed valid by the USPTO, the mark will be able to boast an “R” with a circle around it (®) to indicate it is a federally registered mark.
Having the registration provides many benefits for a company. Being registered provides a presumption of validity, so you don’t have to prove that you’ve met the requirements needed to have a mark.
Once a trademark is issued, the USPTO makes you renew the trademark periodically. The first renewal comes between the fifth and sixth year, then again in the tenth year and then every ten years thereafter. If these fees are not paid, the trademark will go abandoned.
The strength of a mark
The strength of your mark can be a factor in obtaining a registration. The strength of the mark also becomes important if you are trying to enforce your mark in litigation.
A generic mark would be a term that identifies what a product or service is. An example is the word “cake." If your product is a cake, it is not possible to have an exclusive right to that term in the marketplace as others would need to use the term to identify what their product is. Getting protection under trademark law for a generic term is not possible.
The next strength is a descriptive mark. A descriptive mark describes a quality or characteristic of the product. Piggybacking off of the example above, if your product is a “chocolate cake” the term “chocolate” would be considered descriptive. Initially, descriptive marks are not entitled to any trademark protection. To establish protection, the mark must obtain secondary meaning. This is when the public primarily associates that mark (chocolate cake) with a particular producer rather than with the underlying product. After five years, there is a statutory presumption your mark has secondary meaning.
There is also a suggestive mark. Protection is often given to a term that is considered to be suggestive. A suggestive term suggests or references a product without describing the product requiring a consumer to exercise imagination to connect the mark with the product. For example, the term “smokey chocolate cake” for a chocolate cake would most likely be suggestive as there is no such thing as a “smokey” cake.
The most distinctive marks are arbitrary or fanciful terms. A fanciful mark is one that has been created for the sole purpose to act as a trademark and is typically the strongest type of mark. An example would be Kodak or Exxon.
An arbitrary mark would be a company or product name that has nothing to do with the company or product, such as Apple in the computer industry.
Best practice would be to consult with an intellectual property or trademark attorney before registering your product or brand. An attorney who is knowledgeable in this field can determine if something can be registered and will be able to find the correct forms that should be filed.
When should you file for a trademark?
You can file before you even start using the mark. This is known as an “intent to use” application. But there is no pressing time limit for when you need to register your trademark as you can file at any time after you begin using the mark. A trademark only really has value after a product, through sales and advertising, has developed a strong reputation. A credible IP attorney would advise you, at least in the early stages when money is tight, to spend your resources on marketing or product development.
