An Overview of Selecting a Trademark

The Importance of Selecting a Strong Trademark

Selecting a strong trademark to be registered on the Principal Register of the USPTO is crucial for several reasons. First and foremost, a strong trademark is easier to protect legally, as it is more distinctive and less likely to be confused with other trademarks. This is particularly important in a competitive market where infringement and imitation are common, such as clothing and apparel.

Second, a strong trademark can significantly contribute to building brand recognition and consumer loyalty. When customers associate a particular trademark with quality and positive experiences, it can lead to increased sales, customer retention, and positive word-of-mouth marketing. A memorable and unique trademark is an asset that can help differentiate a company’s products or services from those of its competitors.

Additionally, having a strong trademark on the Principal Register grants the owner several legal advantages. This includes the presumption of nationwide validity and ownership, as well as the ability to enforce the trademark in federal courts. These legal protections help to deter potential infringers and ensure that the trademark owner can defend their rights effectively.

Another important aspect of selecting a strong trademark is that it may enhance a company’s reputation and credibility. A well-chosen trademark conveys professionalism and attention to detail, signaling to customers that the company is serious about its offerings. This can result in increased trust and confidence in the brand.

Lastly, a strong trademark can appreciate in value over time as the company grows and expands its market presence. This makes it an important intellectual property asset that can be leveraged in various ways, such as licensing or franchising agreements. In some cases, a highly valuable trademark may even become a deciding factor in merger or acquisition negotiations.

In summary, selecting a strong trademark to be registered on the Principal Register of the USPTO is essential for legal protection, brand recognition, consumer loyalty, and long-term business success. A well-chosen mark can also enhance the company’s reputation, provide a competitive advantage, and appreciate in value as the business grows.

Spectrum of Distinctiveness – Strength of Trademark

The spectrum of distinctiveness is a concept used in trademark law to assess the inherent protectability of a trademark. It ranges from highly distinctive “fanciful” or “arbitrary” trademarks to generic terms that are ineligible for trademark protection. Here’s a brief overview of the categories:

Fanciful Trademarks

These are invented words with no dictionary or other known meaning. Fanciful trademarks are deemed inherently distinctive because they are capable of identifying an exclusive source of goods or services without any additional context. Examples include “Kodak” for cameras or “Exxon” for gas.

Arbitrary Trademarks

These are existing words that have a known meaning in one context but are used in a way unrelated to that meaning. Like fanciful trademarks, arbitrary trademarks are considered inherently distinctive because they serve to identify a single source. An example is “Apple” for computers.

Suggestive Trademarks

These trademarks hint at the nature, quality, or a characteristic of the goods or services, but do not describe the goods or services directly. Suggestive trademarks require a leap of imagination to connect the mark with the goods or services, which makes them inherently distinctive. An example is “Coppertone” for suntan lotion.

Descriptive Marks

These marks describe an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. Descriptive marks are not inherently distinctive and can only be registered if they have acquired secondary meaning, which means consumers have come to associate the mark with a single source of goods or services. An example is “Sharp” for televisions.

Generic Terms

These are words that the relevant purchasing public understands primarily as the common or class name for the goods or services. Generic terms can never be registered as trademarks because they are incapable of distinguishing one source from another. An example would be the term “Computer” for computers.

The further a trademark falls towards the fanciful or arbitrary end of the spectrum, the easier it is to register and protect. The further a mark falls towards the descriptive or generic end, the more difficult it is to register and protect, if it’s even possible at all. The USPTO Principal Register is designed to protect trademarks that are distinctive and capable of distinguishing the goods or services of one party from those of others.

Company Names

Registering a company name as a trademark on the USPTO Principal Register requires that the name meet certain eligibility rules related to distinctiveness, use in commerce, and non-confusion. Here’s a brief overview of these rules:

  • Distinctiveness: As with any trademark, a company name must be distinctive to be eligible for registration. This means it must be capable of identifying the source of a product or service and distinguishing it from others. As previously discussed, the spectrum of distinctiveness ranges from fanciful or arbitrary marks, which are the most distinctive, to generic terms, which are not distinctive at all. A company name that is descriptive of the goods or services it offers may only be registered if it has acquired secondary meaning, indicating that consumers recognize the name as a brand and not just a general term.
  • Use in Commerce: A company name must be used in commerce to be eligible for federal trademark registration. This means that it must be used to identify goods or services that are being sold or transported in interstate or international commerce. Simply registering a company name with a state agency or obtaining a domain name is not enough; the name must be used in a commercial context that affects interstate commerce.
  • Non-Confusion: A company name cannot be registered as a trademark if it is likely to cause confusion with an existing registered trademark. The USPTO considers several factors in determining the likelihood of confusion, including the similarity of the marks, the relatedness of the goods or services, the channels of trade, and the conditions under which sales are made.
  • Legal Compliance: A company name must also comply with all applicable laws to be eligible for registration. For example, it cannot be deceptive, scandalous, or disparaging, and it cannot falsely suggest a connection with persons, institutions, beliefs, or national symbols. The name also cannot consist of or comprise the flag or coat of arms, or other insignia of the United States, or any state or municipality, or any foreign nation.

There’s a common misconception that registering a business name with the Secretary of State, or the equivalent state agency, provides comprehensive trademark rights. In reality, this registration mainly serves to prevent other entities from registering the same or a deceptively similar name in the same state. It does not offer the broad protections that a federal trademark registration provides.

Here’s a more detailed breakdown:

  • Geographic Scope: A state-level business name registration only offers protection within that state’s borders. If a business operates or plans to expand beyond one state, this protection will not prevent another company in a different state from using the same or a similar name. In contrast, a federal trademark registration provides protection across all 50 states.
  • Level of Protection: State registration does not grant the same level of protection as federal trademark registration. For example, it does not give you the legal presumption of ownership or the exclusive right to use the name nationwide in connection with your goods or services. It also does not provide a basis for seeking damages for trademark infringement in federal court.

While state registration of a company name is an important aspect of forming a business, it does not provide the same level of trademark protection as a federal registration with the USPTO. To secure nationwide trademark rights and enjoy the legal advantages associated with federal registration, a company should register its name, logo, or other distinctive identifiers as trademarks with the USPTO.

The following list provides some general guidelines that could increase the chances of a company name being registrable as a federal trademark with the USPTO:

  • Use the company name as a trademark by writing the name in a distinctive font;
  • Avoid using entity designation (e.g., corporation, LLC, LTD) followed by a generic name of the good or service;
  • Avoid using the business address in connection with the company name. The address suggests more of a trade name rather than a trademark;
  • Avoid using other trademarks in connection with the company name trademark. This also suggests that the company name is not being used as a trademark;
  • Avoid using phrases such as “made by,” “operated by,” or other informational phrases with the company name; and
  • If the full company name is actually used as a trademark, avoid applying to register only part of the name. The USPTO typically only allows registration of full company names, not a portion of the name.

Note, the terms “LLC,” “Corp,” and similar business entity designations are generally not registrable on their own as trademarks with the USPTO. These terms are considered descriptive or generic because they merely indicate the type of business entity and do not function to identify and distinguish the source of goods or services.

Slogans & Taglines

Slogans and taglines may also be registered as trademarks with the USPTO. The registration process requires that these slogans or taglines meet certain criteria, similar to traditional trademarks.

First, a slogan or tagline should be distinctive, meaning that it should serve to identify and distinguish the source of goods or services. The more unique and creative the slogan or tagline, the greater the chances it will be deemed distinctive, and thus, eligible for registration.

Slogans or taglines that merely describe the goods or services, or their features or characteristics, are generally not eligible for registration as they lack distinctiveness. However, if a descriptive slogan or tagline has acquired secondary meaning, meaning that through extensive use in the marketplace, consumers have come to recognize it as identifying the source of the goods or services, it may be eligible for registration.

Another key criterion is the use of the slogan or tagline in commerce. This means the slogan or tagline should be used in connection with the sale or advertising of the goods or services, and those goods or services must be sold or transported across state lines or internationally.

It’s also important to ensure that the slogan or tagline is not likely to be confused with any existing registered trademark. This assessment takes into account several factors, such as the similarity of the trademarks and the relatedness of the goods or services.

Finally, the chosen slogan or tagline must adhere to legal requirements. For example, it should not infringe on others’ rights, be deceptive, scandalous, or disparaging.

After choosing a slogan or tagline that meets these criteria, you can apply for registration with the USPTO. This involves filing an application, providing necessary information, and paying the required fees. An examining attorney from the USPTO will then review the application to decide whether the slogan or tagline qualifies for registration.

These general guidelines should help increase the chances of successful registration of a slogan or tagline as a trademark.

Domain Names

Domain names can also be registered as trademarks with the USPTO, provided they meet certain criteria.

First, a domain name must function as an identifier of the source of goods or services, not merely as an address where internet users can access a website. In other words, the domain name should be used in a way that consumers associate it with specific goods or services, and not just with locating the company’s website.

Second, the domain name must be distinctive, meaning it should be unique and creative enough to distinguish your goods or services from those of other businesses. Distinctiveness is evaluated on a scale ranging from arbitrary or fanciful, which are the most distinctive, to generic, which are inherently not distinctive.

Just as with other types of trademarks, domain names that merely describe the goods or services, or their features or characteristics, are generally not eligible for registration as they lack distinctiveness. However, if a descriptive domain name has acquired secondary meaning, meaning that through extensive use in the marketplace, consumers have come to recognize it as identifying the source of the goods or services, it may be eligible for registration.

Another key criterion is that the domain name must not be likely to be confused with any existing registered trademark. This assessment takes into account several factors, such as the similarity of the trademarks and the relatedness of the goods or services.

Finally, the “.com” or “.net” suffix in a domain name, or any other top-level domain (TLD), can be part of a trademark registration with the USPTO. However, the registrability of a domain name as a trademark doesn’t hinge on the TLD itself but rather on the domain name as a whole.

The TLD, like “.com” or “.net”, is typically not distinctive on its own. It does not typically serve to identify the source of goods or services, which is the fundamental function of a trademark. Instead, it is the second-level domain (the part of the domain name that comes before the TLD) that is evaluated for distinctiveness and the potential to function as a trademark.

In the case of a domain name being used as a trademark, the entire domain name, including the TLD, would typically be considered in determining whether it functions as a mark. For example, if a company uses its domain name in advertising in a way that associates that domain name with its goods or services, the entire domain name (including the “.com” or “.net”) could potentially be registered as a trademark.

In recent years, the U.S. Supreme Court in the case of USPTO v. Booking.com affirmed that a generic word combined with a TLD like “.com” could be registered as a trademark if consumers recognize the combined term as a brand, not a generic term. This is a specific situation where consumers perceive the entire term to have source-indicating significance, despite the generic nature of the second-level domain.

However, it is important to note that even if a domain name is registered as a trademark, the trademark rights typically do not extend to the TLD on its own. The rights are generally limited to the use of the domain name in its entirety in connection with the goods or services specified in the registration.

Trademark Search Prior To Adopting Selected Trademark

Conducting a comprehensive trademark search before adopting a selected trademark is crucial for several reasons.

Primarily, it helps ensure that the proposed trademark isn’t already being used by another party. If a similar mark is being used in connection with similar goods or services, and you begin using your selected trademark, you could be held liable for trademark infringement. This could result in costly legal disputes and potentially having to rebrand, which can be a significant setback both financially and in terms of brand recognition.

Secondly, understanding the landscape of similar marks can help gauge the distinctiveness of your proposed mark. A crowded field of similar marks might mean that your mark isn’t as distinctive as it should be to qualify for trademark registration or could lead to a likelihood of confusion which could be grounds for the USPTO to refuse your application.

Finally, a comprehensive search can reveal potential issues that could interfere with the registration process, such as a likelihood of confusion with registered or pending marks. By identifying these issues early, you can address them before you invest significant time and resources in the registration process or the broader implementation of your mark in your branding efforts.