If you are in the stages of starting up a business or company, you might consider registering a trademark. A trademark is a word, name, symbol, design, or a combination of those things, used to indicate the source of goods. A service mark is basically the same thing, but relating to services. General references to a “trademark” usually includes service marks as well.
As consumers, we are surrounded by trademarks daily—coming from commercials, products in grocery stores, stationary at work, and more. Trademarks can carry a lot of value. For instance, they help create goodwill with consumers. They also help consumers distinguish your product or service from that of another.
Registering and Choosing the Trademark
When you or your company has a trademark, we highly recommend seeking the guidance of an attorney to help register the mark with the United States Patent and Trademark Office (USPTO). This will give you and your trademark protections and benefits that would otherwise be unavailable.
However, the USPTO does not grant registration for all trademarks. The more unique the trademark is, the stronger it is, and the more likely that the USPTO will grant its registration. There are four strength categories from weakest to strongest— (1) generic, (2) descriptive, (3) suggestive, and (4) fanciful/arbitrary.
An example of a generic mark is the word APPLE relating to a business that sells apples. There is no sense of uniqueness; there is no creativity. The USPTO will not register a generic mark.
The next level is a descriptive mark. This is a little stronger than a generic mark, but is still weak. Do your best to avoid coming up with a descriptive mark. As the name suggests, it is simply a mark that describes the product or service—for instance, selecting CRUNCH for a hard-shell taco.
When your mark is in this category, the chance of the USPTO granting protection is higher. Instead of describing the product or service, it hints at it. For instance, BURGER KING is a good example of a suggestive mark—it suggests that the burgers from that eating establishment are above all others—i.e. King.
This is ideally where you want your mark. Marks in this category are either made up, have no meaning, or have nothing to do with the product or service they are associated with. For instance, going back to the word APPLE. While it may not work for a company selling apples, it works for a company selling electronics. One has nothing to do with the other—arbitrary. Another example is PEPSI. To our knowledge, the word “PEPSI” had no meaning at all.
Likelihood of Confusion
The USPTO will also generally deny applications if the trademark has a high degree of a likelihood of confusion with another trademark. Likelihood of confusion usually occurs between two trademarks when they look like one another and the goods or services of the marks are so related that consumers could make the mistake that the different goods and services came from the same company.
A great way to avoid rejection of your application or even potential lawsuits down the road due to likelihood of confusion is to conduct something called a trademark search.
Start Off on the Right Foot
Success is great. Succeeding from the beginning is better. One thing that might prevent success is getting mixed up in a trademark dispute or even wasting unnecessary money doing something in error. A licensed trademark attorney can help you determine the strength of your proposed trademark. He or she can also determine whether the USPTO might reject your proposed trademark due to likelihood of confusion. Additionally, a licensed trademark attorney can tell you other things about your proposed trademark that we have not been able to touch upon in this post, such as surname issues, geographical issues, which classes to register under, risks of genericization, and more. Start off on the right foot. Reach out to a licensed trademark attorney today.