Sometimes I forget that I am immersed in the trademark world, so a lot of this is second nature to me and that just isn’t true for the general population. I do this with health and fitness too, and it keeps me from providing as much help and value as I can. So today I wanted to take the time to review some of the major points on trademarks and how it all works. I still get a lot of the same questions and hopefully, this will clear a few things up.
What is a trademark?
A trademark is a business name, logo, or slogan that helps consumers identify the source of goods or services. This can be as simple as one word, or a combination of many words plus a design. The main thing to remember when developing a brand or product name is to try and be unique!
Do I need a trademark?
When I say need a trademark I mean do you need a trademark registration. The answer is the good ole it depends! As I’ve mentioned in the past, trademarks are protected by common law the moment you begin using them in commerce (subject to a few minor things that can’t be described here without situational details). This means that you can stop others from calling their same or similar business what you are calling yours if you’re the first to use that name in commerce.
The problem with only relying on the common law to protect your trademark is that it is geographically limited, and you have no incontestability in the mark. If you operate throughout the US particularly if you’re online, then registering your mark is something I recommend you do. If you’re putting a ton of money into the business and brand before you even launch I also highly suggest reaching out to an attorney to perform a trademark search for you to ensure you can use that name. Whether you move forward with registration at that moment will depend on a few factors, but knowing that the mark is available for use is of the utmost importance before you start your business.
Registration also provides notice to all subsequent potential users, you gain incontestability, and the award for a trademark infringement suit is much better if you have a registration.
What kinds of trademarks are there?
There are four types of marks, two of which don’t generally gain registration with the USPTO.
-Arbitrary or Fanciful
-Suggestive
-Merely Descriptive
-Generic
These are listed in order of strength. Arbitrary or fanciful marks typically garner the most amount of protection because they are unique and no relationship exists between the mark and the business apart from the one that is created.
Suggestive marks are also okay. They require a consumer to put some thought into identifying the source of the goods or services. The USPTO will grant registration to these kinds of marks if a consumer must use their imagination to make the connection between your brand and its name.
Merely descriptive marks will hardly even gain protection (again there is a small caveat to this). These kinds of marks simply describe the product or service so the law doesn’t think it is fair to allow someone to stop others from using it. Think Bob’s Burgers. And finally, generic marks really just name the goods or services being sold. The USPTO is definitely not going to register this for the reasons stated above.
What is the difference between TM and ®?
The TM symbol can be used by anyone that is asserting their rights in their trademark. You don’t have to have a registration with the USPTO, and you should be using this in association with your business or brand name.
® can only be used once you have obtained registration from the USPTO. This symbol shows consumers in the US that you have taken the time to register your mark and that you really mean business when it comes to protecting it.
These symbols are not interchangeable and you can’t use ® if your mark is not registered. So please don’t try.
Picking a brand/business/product name
I have gone over this a few times, so this is going to be a brief overview. But, the general principle to follow is this…You cannot use a name that is already in use for the same or even similar product. What the USPTO and the courts consider to be similar will likely blow your mind so if there is even a question, you need to get in touch with an attorney.
When it comes to developing the name I generally counsel my clients to get as creative as they can! This is the fun part, so why not spend a little extra time finding something that is perfect for you?
Once you have decided on a name or names perform a search of your own to see if anyone else is using it. Take to the world wide web- social media, online publications, and even the USPTO’s website will help you in your search. When searching you can narrow your search to your field of products or services but still keep it broad if you can. Example, in the fitness industry some companies have marks for supplements, clothing, and workout accessories. If you’re getting into anything fitness related-you’ll need to search a wide variety of products and services. Don’t just stop at nutritional supplements.
If you’ve done a pretty great search and you’re not sure if moving forward on your name is a good or bad idea, contact an attorney to help you decide. Trust me when I say spending the few hundred to have a consultation on this is worth it. I’ve had clients come to me that have spent thousands on a name they can’t use…if only they’d called me sooner.
Application process
The application process is tough. It can take anywhere from 6 months to a year before your mark is actually registered. You need to fill out the application properly, provide the right specimen, and likely answer an office action or two.
If you’re unsure what any of that means, you probably don’t want to do this on your own. Filing fees are $275 per class of goods and services. So if you want to register for more than one class, multiply that by the number of classes you want.
Once the examining attorney is satisfied with your application and approves you for publication there is a 30-day opposition period where any other company that feels your trademark may cause confusion in the marketplace with theirs can oppose you. Oppositions are not fun and sometimes come out of nowhere. Again, this isn’t something you should do on your own. Dealing with an opposition is like going to court.
If you make it past all of that your mark will be registered and you’ll have a few things to keep up with through the years like filing your declaration of use and incontestability. Plus, you need to police your marks forever or risk losing them. You can read my past article on why this is so important if you’re confused.
Miscellaneous questions I get
No, obtaining a domain name with your desired mark does not give you trademark protection. A domain name doesn’t give you common law protection because you aren’t using the mark correctly in commerce to gain that, and it certainly doesn’t give you registration because you haven’t done anything yet to gain that.
Just because your mark is registered in one class, doesn’t mean it is protected in everything. If you registered your mark in IC 25- apparel, you can’t stop someone from using something similar for their coffee mug business. They’re not the same class of goods or services. Are there arguments to make as to why this may cause confusion? Sure. But that is for the USPTO and the court system to decide if you initiate opposition or infringement proceedings.
If you’re not using the mark in commerce but you want to file an application with the USPTO anyway, you must file a 1b application and be ready to pay an additional $100.00 filing fee when you provide your statement of use. Correctly identifying your filing status is extremely important when you apply.
And finally, no copyrights and trademarks are not the same things.
I hope you found this little refresher helpful! If you have questions or are ready to move forward with protecting your trademark let’s chat! I would love to be the one to help you out. I am now offering 1-hour intellectual property consultations to get you and your business started on the right foot so email me at Shannon@montgomerypllc.com to set one up today!
Please note that this is not meant to be legal advice for you or your situation, this is merely some legal research and knowledge on the given topic.