Your brand is the symbol of your business. A trademark protects your brand integrity by preventing other companies from using a similar symbol to free-ride on your reputation. Trademarks reduce the risk of namespace collision. A trademark can be any name, image or slogan used to identify a company.
This two-part post teaches the basics of trademark law and how to register a trademark at the US TM Office. Part one discusses the benefits of trademark registration, some basic trademark law, and how to search the trademark database. Part two is a walkthrough of the trademark application process at the US Patent and Trademark Office (I’ll call it the “TM Office”).
The trademark application process, at its core, is simple data collection. The TM Office collects basic info on the trademark and the trademark owner. Sadly, the TM Office website complicates this simple process with a tangle of baffling instructions.
Selecting a Name
“There are only two hard problems in Computer Science: cache invalidation and naming things.” – Phil Karlton
A strong trademark is (a) unique and (b) distinctive rather than descriptive. A trademark is “descriptive” if it describes the product it’s used to sell. The more closely the trademark describes the product being sold, the weaker the trademark. If the word actually defines the product, it is “generic” and cannot be trademarked. Uniqueness and distinctiveness are introduced briefly below, and then in more detail under the headings “Distinctiveness” and “Likelihood of Confusion.”
Distinctive: Pick a name that does not directly describe your product. Trademark law gives the strongest protection to words that are either made-up (like Xerox, Spotify), or words that are entirely unrelated to your product (e.g., Apple, Uber, Caterpillar).
Consider words that evoke aspects of your product without directly describing it (e.g., Fitbit, Pinterest, Oracle, Red Bull, Spanx). Think of names that highlight your competitive advantage (Duracell, Whole Foods) or evoke an experience (YouTube, Kickstarter, Nest). Consider verbs or verb-like words (Sprint, Pampers, Excel). Make it memorable. Rhyme and repetition can help (FitBit, SoundCloud, Snapchat, Krispy Kreme, PayPal, Under Armour).
Names should be internet friendly. Is the .com domain available? Can you buy it at a reasonable price? Is the name SEO friendly? A name should be pronounceable and use an intuitive spelling. Does it sound natural in a sentence like “I just tried [name] and now my life is so much better”?
Naming Links: Alexandra Watkins at Eat My Words offers great naming guidance for consumer products. Dan Reeves’ “Nominology” article has more solid naming advice. He suggests reviewing names according to 7 dimensions: Evocativity, Brevity, Greppability, Googlability, Pronounceability, Spellability, and Verbability.
Unique: After brainstorming a handful of strong potential trademarks, do a “clearance search” to see if anyone else is already using similar trademarks on similar products. The name can’t be identical to competitors’ names, and ideally shouldn’t even be similar. Brainstorm 3 or 4 potential names and Google them (dig beyond the first page of results). If nothing turns up on Google, then search the US Registered Trademark Database.
Trademark Symbols: ™ and ®
Use the ™ symbol after an unregistered trademark. Use the ® symbol after a registered trademark. These trademark symbols tell your customers and competitors that you are claiming trademark rights in your brand name or logo or slogan.
Benefits of Trademark Registration
Trademark law automatically grants a basic set of rights called “common law” trademark rights. These basic rights can be enhanced by securing a federal trademark registration. Registration is a big improvement over the default common law trademark rights. A registration is strong evidence1 of your exclusive trademark rights, it increases the penalties for infringement, and provides official government recognition of your brand identity.
|Exclusive Rights||You have the exclusive right to use the trademark to sell the specified goods & services.|
|Validity||Not every word or symbol can be a valid trademark. For example, generic words are not valid trademarks. A trademark registration is evidence that your trademark is valid.|
|Start Date||Trademark rights go to the first company to use the trademark (with some exceptions). A registration is evidence of your “date of first use” of the trademark.|
|Continuous Use||Trademark rights end when you stop using the trademark to sell your goods or services. A trademark registration is evidence that you have not abandoned the trademark.|
|Nation-Wide Rights||Registration provides immediate nation-wide rights, while common law rights are limited to the particular towns and cities where the trademark is actually used.|
|Counterfeit Imports||With a trademark registration, you can have Customs seize counterfeit imports at the border.|
|Incontestability||After 5 years of registration, a trademark can become “incontestable.” An incontestable registration cannot be cancelled (with some exceptions).|
|Compensation||Infringing a registered trademark results in increased maximum penalties. It allows for treble (3x) damages, and forcing the infringer to pay your attorney’s fees.|
|Psychological Benefits||Registration provides an intangible psychological advantage, especially in front of a jury.|
While basic “common law” trademark rights are granted automatically, registered trademark rights are far superior. Serious brands need to register their trademarks.
A Trademark Can Be any Symbol that Identifies a Brand
Trademarks are generally words or logos. Slogans and short phrases are also common trademarks. But a trademark can be any symbol that identifies a brand. For example, unique product packaging (“trade dress”) can be trademarked, as well as sounds or jingles, and even a scent can (in theory) be trademarked.
Trade dress is unique product packaging or product configurations that distinguishes one brand from another. Trade Dress can be any element of the “total image and overall appearance” of a product, or the totality of the elements, and “may include features such as size, shape, color or color combinations, texture, graphics.” TMEP 1202.02. Even a restaurant theme or atmosphere or decoration can be registered as trade dress.
For most businesses, a word and a logo will be enough of a trademark.
Trademark rights begin when you start using a trademark in commerce (to advertise and sell a product or service). Trademark rights expire (go abandoned) when you stop using the mark in commerce without any intent to restart. That is, a trademark will not expire because of a temporary suspension of a product, but it will expire on a permanent termination of a product or permanent name change.
The Relationship Between the Mark and the Product is Central to Trademark Law.
The two biggest hurdles to clear in the trademark registration process are Likelihood of Confusion and lack of distinctiveness. Both of these concepts involve the relationship between a “mark” and the product or service being advertised under the mark. For example, think of “apple” as a mark used for the product “computers,” or FedEx as a mark used for “delivery” services. To complicate matters, a “mark” can refer to either a “design mark” or a “word mark.” Here’s a table to help sort this out:
|Word Mark||Design Mark||Goods/Services|
Trademark law focuses on the relationship between the “mark” (either word or design) and the “goods.” The central question of all trademark law is “how well does the mark help consumers identify the company that sells the goods?” Both “distinctiveness” and “likelihood of confusion” stem from this question.
TM Law: Likelihood of Confusion
The TM Office will compare your trademark to a database of existing trademark registrations. If your trademark is too similar to an existing registration, they will send you an “office action” rejecting your application for “likelihood of confusion” under §2(d). See Trademark Manual of Examining Procedure (“TMEP”) 1207.01. “Similarity” measures both the similarity of the marks and the similarity of the goods/services. This comparison is a sliding scale. The “more similar the marks at issue, the less similar the goods or services need to be” to reject an application for likelihood of confusion. TMEP 1207.01(a). If the two marks are virtually identical, the relationship between the goods need not be as close to find a likelihood of confusion.
The TM Office will refuse your application if your mark, as used on your goods/services, is too similar to an existing trademark registration. How similar is too similar? If an average consumer is likely to confuse the new product for the old one, then the trademarks are too similar. In the language of the Trademark Statute, the TM Office will refuse to register a trademark that, “Consists of or comprises a mark which so resembles a mark registered in the Patent Office… as to be likely, when applied to the goods of the applicant to cause confusion….” This “likelihood of confusion” test involves several complicated legal considerations, and goes beyond the scope of this quick guide.2
TM Law: “Distinctiveness”
A trademark should be “distinctive” as opposed to merely “descriptive” or worse, “generic.” TMEP 1209. A word is generic if it defines the particular product it’s being used to sell. Generic words are reserved for the public domain, and cannot be trademarked. For example, every coffee shop is allowed to use the word “coffee” in its marketing. The TM Office will not grant any single coffee shop the exclusive rights to use such a generic term. If you apply for a trademark that defines–or even closely describes–your product, the TM Office will reject it.
Trademark distinctiveness is a spectrum of four categories. From weakest to strongest, the categories are (a) generic (b) descriptive (c) suggestive and (d) arbitrary. Lets start with an example. Assuming the product is “computers” here are possible trademarks and their level of distinctiveness:
|COMPUTER||Computer||Generic||No TM Rights|
|DIGITAL DATA MACHINE||Computer||Descriptive||Weak Rights|
|SILICON POWER||Computer||Suggestive||Strong Rights|
“Computer” is the generic word for computers, so no one can trademark it. “Digital Data Machine” describes a computer pretty closely - a computer is a machine that manipulates digital data. Its possible to trademark this type of descriptive mark, but its not ideal. Even if its registered, it will always be a weak trademark. “Silicon Power” suggests some qualities of a computer (some parts are made of silicon), but the name doesn’t literally describe a computer. This type of name can be trademarked. Finally, the word “Apple” has nothing to do with computers at all. This puts it in the strongest category of trademarks - “arbitrary” marks.
Separating descriptive marks from suggestive marks is often the hardest distinction to make. So here are some examples with links to the actual cases:
|ACOUSTIC RESEARCH||Audio Equipment||Suggestive||Strong|
|ROACH MOTEL||Insect Traps||Suggestive||Strong|
|FROSTY TREATS||Ice Cream||Descriptive||Weak|
|24 HOUR FITNESS||Gym||Descriptive||Weak|
|BEST BEER IN AMERICA||Beer||Descriptive||Weak|
Marks that start off weak can eventually become stronger through heavy advertising and developing strong brand recognition. This is called “acquired distinctiveness.” However, when launching a new product or company, its far easier to start with a strong mark than to try to acquire distinctiveness.
Here are some other distinctiveness traps to avoid:
Geographic locations make weak trademarks. TMEP 1210. The TM Office likes to reject applications that take the format “Location + Product”, as in “Kentucky Fried Chicken.” Don’t use this format.
Personal names make weak trademarks. TMEP 1211. Don’t name your company or your product after yourself. It will raise all kinds of trademark problems.
laudatory self-praise makes a weak trademark. TMEP 1209.03(k). Marks like “Best Beer” are likely to be rejected by the trademark office as merely descriptive of beer.
Run your proposed names through a trademark “clearance” search before settling on a final name. Search for existing trademarks and registrations, but don’t limit the search to identical marks. Search for similar marks. Search for marks that are similar enough that they are “likely to cause consumer confusion” (as discussed above, and at TMEP 1207.01).
Where to search? Start with google. Then move on to trademark databases. Three good databases to search are the US TM Office (called “TESS”), the EU TM Office database (called “OHIM”), and the World Intellectual Property Office trademark database (called “ROMARIN”). Terrible acronyms.
|Search These Trademark Databases:|
|US TM Office Search - TESS|
|EU TM Office Search - OHIM|
|World IP Office Trademark Search - ROMARIN|
The EU and WIPO databases are somewhat intuitive. The US database is old and confusing, so I’ll offer some tips. Go to the US TM Office Search page. You should see this:
Click on the “free form search” and try using this search pattern:
"some mark*"[BI] AND "some products"[GS] AND 036[IC] AND live[LD]
Coders might recognize this type of search as a weird cousin of “regular expressions” or “GREP.” The database is picky about the search string format you use. Type in the word you want to search for, and follow it (no spaces) with the initials for the part of the database you want to search. These initials need to be in brackets. Search operators like “AND” and “OR” need to be capitalized.
|“markxyz*“[BI]||This searches for the term “markxyz” in the “Basic Index.” The Basic Index is the index of both word marks and design marks. Use an asterisk as a ‘wildcard.’|
|“productxyz”[GS]||This searches for marks with “productxyz” listed in the goods and services field of the database.|
|036[IC]||Searches for trademarks in International Class 36|
|live[LD]||This limits your search results to live trademark registrations and applications.|
Putting that together with an example:
“Snackattack”[BI] AND “cupcakes”[GS] AND live[LD]
This search string will look for any registered trademarks for the word “snackattack” as used on the product “cupcakes.”
Database Timeouts - The US Trademark Database will timeout after 5 idle minutes, and then force you to start your search over again. This is a pain.
The Trademark Application Process
Now that you have a unique and distinctive mark, you’re ready to apply for a trademark registration in part 2 of this series.
Registration is “prima facie” evidence; it creates a legal presumption that you are the true trademark owner. Although these presumptions can be overcome, they stack the litigation deck in your favor. ↩
The leading case on this complicated “likelihood of confusion” issue is In re EI DuPont DeNemours & Co., 476 F. 2d 1357 (CCAP 1973). ↩