Trademark Basics

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:


1. Protectability

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 or services.

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 mark.

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.



2. Availability

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.


Filing an 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.

2003-2008, Just Trademarks, All Rights Reserved