Trademarks and Branding
"There are only two hard problems in Computer Science: cache invalidation and naming things." -- Phil Karlton.
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. This post will help you pick a brand name that (1) doesn’t infringe on an existing trademark, and (2) will be easy to protect in the future.
Selecting a Name
Change Your Name. “If you have a US startup called X and you don’t have x.com, you should probably change your name.” By Y-Combinator founder Paul Graham.
A strong trademark is (1) unique and (2) distinctive (as opposed to 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 at all. 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.
Nick Kolenda’s guide to Brand Names. Learn how to build a brand name that simply “feels right” for your product or business.
Trademark clearance is the process of searching the USPTO trademark database, as well as other databases, to confirm that no one else is already using a similar name to sell a similar product or service.
At a minimum, do a google search for the new name. If Google doesn’t turn up any similar names, then discuss the name with a trademark attorney to confirm that it is available to use and register.
Southpark on Trademark Clearance. [NSFW]
Trademark Symbols: ™ and ®
Use the ™ symbol with unregistered trademark. Use the ® symbol with 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 common law rights come from using the trademark in commerce, not from filing an application. 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||A trademark registration is evidence that your trademark is valid, as opposed to generic or otherwise invalid.|
|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, including animation, unique product packaging (“trade dress”), as well as sounds or jingles, and even a scent can (in theory) be trademarked. For most businesses, basic word and logo trademarks will provide sufficient protection.
A “design mark” simply refers to a logo or design used to identify a particular brand. A design mark can incorporate stylized letters, or just be a drawing without any recognizable letters or symbols.
For example, Bass Ale’s red triangle is a famous design mark. It’s been in continuous use since 1856, and was in fact the very first trademark registered in the UK (UK registration no. 0000001). It was registered in the US in 1912, with the far more mundane registration no 88,266.
Should I file a Design Mark and Word Mark Together?
Company branding commonly involves a word in a particular font and/or a word and a symbol together. This type of branding can either be combined into a single trademark application, or separated out into a “word mark” application and a “design mark” application.
A “word mark” (also called a “standard character” mark) protects a word in any font or style. “A registrant is entitled to all depictions of a standard character mark regardless of the font style, size, or color….” (MPEP 1207.01(c)(iii)). A “design mark” (also called a “special form” mark) affords a more limited protection. If the design includes letters in a particular font or color, the owner may have trouble enforcing the trademark against companies that use a similar word in a different font or different color. Likewise, a design mark that includes letters and a logo or drawing affords a more limited protection than a pure word mark. It may be difficult to enforce such a design mark against a company that uses a similar word with a different logo.
As a result, trademark owners should generally register their word marks and design marks separately. The filing fees will be more expensive, but the resulting trademark protection will be broad. It’s generally worth paying the extra fees in order to get this protection.
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
Similarity of the Marks
The likelihood of confusion test compares the marks for similarity or dissimilarity in their entireties as to appearance, sound, connotation and commercial impression. TMEP 207.01(b).
Likelihood of confusion found between:
|1st Mark||Product/Service||2nd Mark||Product/Service|
|XCEED||agricultural seed||X-SEED||agricultural seed|
|ISHINE||floor polish||ICE SHINE||floor polish|
|CITY WOMAN||blouses||CITY GIRL||female clothing|
|RUST BUSTER||spray lubricant||BUST RUST||penetrating oil|
Similarity of the Products or Services
The goods and services need not be identical to find a likelihood of confusion, particularly if the marks are identical or nearly identical. TMEP 1207.01(a)(i). A likelihood of confusion may be found if the products or services are marketed through similar channels, or if the products are likely to be encountered by consumers in a way that suggests they come from the same company.
Likelihood of confusion found between:
|1st Mark||Product/Service||2nd Mark||Product/Service|
|ON-LINE TODAY||Internet connection services||ONLINE TODAY||electronic publication|
|MARTIN’S||wheat bran and honey bread||MARTIN’S||cheese|
|SHAPES||beauty salons and spas||SHAPE||beauty magazines|
|VANTAGE TITAN||MRI diagnostic apparatus||TITAN||medical ultrasound device|
If the products or services in question are not related or marketed through similar channels, then even if the marks are identical, confusion is not likely.
No likelihood of confusion between:
|1st Mark||Product/Service||2nd Mark||Product/Service|
|COACH||test prep materials||COACH||luxury handbags|
|RITZ||cooking classes||RITZ||kitchen textiles|
|QR||coaxial cable||QR||photocopy machines|
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.
A mark that would not ordinarily be distinctive, such as a descriptive mark or a product configuration, can become distinctive through marketing and eventual customer recognition. When customers eventually come to associate a particular word or symbol with your brand, it has “acquired distinctiveness.”
Since measuring “acquired distinctiveness” is difficult, the Trademark Office takes a shortcut – it assumes that any (non-generic) mark that has been in use for 5 years has acquired distinctiveness.
Use in Commerce
To qualify for a federal trademark registration, a mark must be “used in commerce” and this commerce must be “interstate commerce.” The Trademark Act defines “use in commerce”, but its definition of when commerce becomes “interstate” is somewhat less helpful Fortunately, the interstate element of the commerce requirement is fairly easy to satisfy.
Bona Fide Use in Commerce Requirement
The Trademark Act defines “use in commerce” as the “bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 USC §1127. For goods, a mark is “used in commerce” when it is “placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and the goods are sold or transported in commerce.”
For services, a mark is “used in commerce” when it is “used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.” 15 USC §1127.
Merely advertising the available of services is not sufficient. The advertising must be made in connection with an actual offering of the services in question. “To qualify for registration, the Lanham Act requires that the mark be both used in the sale or advertising of services and that the services themselves have been rendered in interstate or foreign commerce.” David Couture v. Playdom (Fed. Cir. 2015) (citing McCarthy on Trademarks and Unfair Competition §19:103 (4th ed. Supp. 2013)).
Interstate Commerce Requirement
Federal trademark registration requires use in “interstate commerce.” Trademark use that takes place entirely within a state will not support a federal trademark registration. However, “interstate” commerce is defined broadly, and certainly includes any services offered online. Planned Parenthood Federation of America, Inc. v. Bucci, 42 USPQ.2d 1430 (SDNY 1997), aff’d, 152 F.3d 920 (2d Cir. 1998).
Even if a mark is only used within a single state, it may still be considered “interstate commerce” if the use has an effect on commerce in another state. TMEP 901.03 For example:
A mark used to identify a single-location restaurant serving interstate travelers is in “use in commerce”. Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662 (Fed. Cir. 1991).
The sale of wine within only one state was sufficient “use in commerce” where the wine bearing the mark was shipped to the trademark owner from an out-of-state source. In re Silenus Wines, Inc., 557 F.2d 806, 194 USPQ 261 (C.C.P.A. 1977).
Automotive service station located in one state was considered interstate commerce because the services were available to customers travelling interstate on federal highways. In re Gastown, Inc., 326 F.2d 780 (C.C.P.A. 1964).
A single-location billiard parlor was considered interstate commerce because its services were advertised in both Kansas and New York. U.S. Shoe Corp. v. J. Riggs West, Inc., 221 USPQ 1020 (TTAB 1984).
“Intent to Use” Trademark Applications
US trademark law allows companies to reserve trademarks they intent to start using in the near future. 15 USC §1051. This is often called a “§ 1(b)” application.
Time Limit. Trademark rights may be reserved in this manner for only a limited in time. If the intent-to-use application is approved, the applicant must demonstrate actual use in commerce within six months of the application’s notice of allowance. This time limit may be extended for five additional six-month periods, for a total time limit of 36 months from the date of the notice of allowance.
Strategy. Companies should file intent-to-use applications as soon as they have settled on a name for a new product or service. This begins the trademark application process early. It generally takes at least four months from application to allowance. By getting a head-start on their trademark work, companies may be able to obtain a registered trademark soon after their product hits the market.
Get out of my namespace. NY Times, 2004.
The Weird Science of Naming New Products. NY Times, 2015.
IO Bureau tells the story of its branding process. 2019.
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). ↩