What is a Trademark?
“Trademark” is the legal name for a brand name. It is a word, symbol
or design used by a company to identify its goods or services. A
trademark is different from a generic name in that a generic name is
simply the common descriptive term used for a particular type of
product or service, such as “adhesive strips” or “sports drink,” for
example. A trademark, on the other hand, signifies that the product
or service comes from a particular company, e.g. BANDAID adhesive
strips and GATORADE sport drink. The term “trademark” refers to the
words or logos that are attached to products (NIKE and TIDE for
example), whereas “service mark” refers to the words or logos
associated with services (FEDEX and SOUTHWEST AIRLINES). We normally
use the term “trademark” or “mark” to refer generally to both
trademarks and service marks.
Trademarks protect their owners as well as consumers by identifying
the source of a product or service. They also help owners to
establish goodwill in their company and in the products and services
with which their marks are associated. Consumers are protected
because trademarks help them identify the quality of a product or
service associated with the mark.
How are Trademark Rights Acquired?
In the United States and some other countries (Canada and United
Kingdom, among others) trademark rights are acquired through use of
a mark. This means that companies or individuals have what are known
as “Common Law” rights in a mark as soon as they begin using the
mark in connection with a product or service. While a trademark
registration provides valuable benefits to its owner, a registration
or application is not a prerequisite to use or ownership of a
trademark in the US.
Choosing a Strong Trademark
There are two key issues to keep in mind when choosing a trademark:
Product or service names range from highly distinctive,
highly protectable trademarks to generic names.
Fanciful or arbitrary marks are invented words (KODAK) or common
words with no particular connection to the product or service or
no connection to a feature or function of the product or service
(APPLE). These are the strongest types of trademarks because
they are the most distinctive and as such, the most protectable.
Suggestive trademarks are those that may not immediately
describe the goods or services, but they suggest the goods or
services. Suggestive marks require some degree of imagination to
understand the nature of the goods or services. For example with
the PETSMART trademark, PETS suggests products related to pet
care and MART suggests a store of some kind. Suggestive marks
are less distinctive and protectable than fanciful/arbitrary
marks. Although they are not as strong as fanciful/arbitrary
marks, they are sometimes preferred from a marketing standpoint
because they give customers a hint as to the nature of the goods
Descriptive marks, as the name suggests, describe a
product or service (or describe characteristics or features of a
product or service). Because descriptive words need to be
available to all sellers in a market (for use in describing
their goods or services), they are not protectable as trademarks
until they have been so widely used and marketed over a long
period of time that the buying public comes to associate the
descriptive trademark with a particular company or source.
Because extensive use is required in order for a descriptive
mark to be protectable and registerable, you should prepare to
spend a significant amount of time and money promoting such a
At the far end of the spectrum are generic terms. These
aren’t trademarks at all. They are simply the commonly used
names for particular products or services. For example, “tissue”
is a generic name and KLEENEX is a brand name or trademark.
Generic terms are never protectable as trademarks because they
must be available for everyone to use.
Once you have chosen a strong, protectable trademark, a
search must be conducted to make sure that there are no other
companies or individuals already using the mark for the same or
similar goods or services. The simplest and least extensive
search is called a “Knockout Search.” In a Knockout Search we
check the US Patent and Trademark Office and state trademark
offices’ databases for applications or registrations for
trademarks that are identical to your mark. This is NOT an
extensive search, but is used mainly to let you know if there
are obvious problems with the trademark you have chosen.
A “Screening Search” is slightly more thorough in that we check
for marks that are either identical or similar to your mark.
Because a trademark application can be rejected if there are
other marks that are similar, even if not identical to your
mark, it is important to search for other marks that might look
our sound close to your mark.
As mentioned above, here in the US, trademark rights are
acquired through use of a trademark (“Common Law” rights). For
this reason, it is also very important to make sure that there
are not other individuals or companies using a mark (even
without an application or registration) that is similar or
identical to yours. Our most extensive search, a “Comprehensive
Federal, State and Common Law” covers the broadest range of
trademarks. In addition to casting a wider net for applications
and registrations for similar marks, this search covers common
law trademarks by reviewing databases that include company
names, product names and service names for which a trademark
registration may never have been sought.
Application for Registration
Once you have chosen a strong trademark and determined that the mark
is available for use, we can prepare and file a federal trademark
application. A federal trademark application can be based either on your
actual use of the trademark (meaning that you are currently selling
products or services with the trademark) or on your intent to use the
mark in the future. Yes!, you can “reserve” rights in a trademark by
filing what is known as an “Intent to Use” application. The registration
for a mark based on this intent to use will not issue until you actually
begin using the mark.
The trademark application process typically takes between 12 and 18
months if there are no substantive objections from the Patent and
Trademark Office and if no oppositions are filed by third parties. Keep
in mind, of course, that you need not wait for the registration to issue
before you can start using your trademark.
Once your registration issues, assuming you continue using your
trademark and file the required maintenance documents with the USPTO,
the registration will remain valid for ten years. After the initial
10-year registration period, again assuming you continue using the mark
and filing the required maintenance and renewal documents, the
registration can remain valid indefinitely.
The information presented on Just Trademarks’ website has been created
for general informational purposes and is not intended to render
specific legal or other professional advice or service. No
representations or warranties, either expressed or implied, are given
herein with regard to the legal or other consequences resulting from
the use of the information provided on Just Trademarks’ website.
Just Trademarks will not be liable or responsible for any damage or
inconvenience caused or alleged to be caused by the use of the
information on this web site. Access to this website alone does not
create an attorney-client relationship. No attorney-client
relationship is established unless and until an agreement to provide
services is entered into.
Just Trademarks is owned and operated by Trademark Attorney Jamie R.
Shelden, licensed to practice in the state of California and serving clients
throughout the United States and abroad. Just Trademarks
1760 Suite F, PMB 220, Airline Highway, Hollister, California 95023.