The following is meant as an introduction to the issues you should consider before choosing a trademark. Trademark analyses are very fact-specific, so we strongly encourage you to consult with us or another law firm before taking on the risk and expense of using a trademark or filing a trademark application.
Trademarks vary in “strength,” depending on how distinctive they are, that is, the ability to which they are able to distinguish your product from products offered by someone else. The stronger the trademark, the stronger your rights.
Trademark law recognizes the following categories of distinctiveness, listed from strongest to weakest:
- Fanciful marks are coined words, invented to serve as a trademark, such as:
- XEROX
- EXXON
- Arbitrary marks are real words but arbitrary in relation to the goods/services with which they are used, such as:
- APPLE for computers
- DELTA for an airline
- Suggestive marks suggest a quality or aspect of the good/service on which they are used, such as:
- COPPERTONE for sunscreen
- GREYHOUND for bus service
- Descriptive marks describe the good/service. A descriptive mark cannot be fully protected until the mark acquires distinctiveness through extensive use, usually a minimum of five years:
- CREAMY for yogurt
- GENERAL MOTORS for cars (after decades of use, consumers now associate the mark with goods/services provided by one company; it has thus acquired “distinctiveness” and serves as a trademark)
- Generic “marks” are every-day names for the good/service with which they are used and can never be protected as a trademark:
- APPLE for apples
- GREYHOUND RACE for greyhound dog racing
- ASPIRIN and ESCALATOR (both began as distinctive marks but became “genericized” through common usage to refer to the good itself rather than the brand of good)
For more information about trademark strength, see Trademark Strength (INTA).
Do not choose a mark that describes your product!
We just said it, but because so many businesses want to do this, we’re going to repeat: A name describing your goods/services may seem like a good idea from a marketing perspective, but it is not a strong brand (unless and until you use it extensively for several years such that consumers associate it with your company and product rather than the type of product), and you may not even be able to protect it as a trademark at all. Additional examples:
- 104 KEY for a keyboard
- LIGHT for portable computers
- WINDOWS for windowing software (after many years of widespread use, this mark acquired “distinctiveness” and was able to serve as a trademark)
Trademark infringement occurs when, regardless of their intensions, someone uses a mark in a way that is likely to cause consumers to mistakenly believe that their good/service comes from or is somehow associated with those of an owner of another mark. Determining whether a “likelihood of confusion” exists is based on both the similarity of the marks and the similarity of the goods. The more similar the two marks, the less similar the goods/services need to be in order to find a likelihood of confusion and thus infringement, and vice versa.
The following factors are used in determining similarity of marks. The examples given are considered to be very similar; thus, if used in conjunction with related goods/services, the junior user’s mark infringes the senior user’s mark.
Sound
MARKEY and TEA MARQEE
MADE RIGHT and MADE RITE
Appearance
Meaning and/or connotation (including translations)
LUPO and WOLF
APPLE and GOLDEN DELICIOUS
Overall commercial impression
DUTCH MASTERS and LITTLE DUTCHMAN
MONEY and $$$
Many people search google for the trademark they wish to use and when they don’t find an exact match, assume they can legally use the mark. Unfortunately, assessing the risk that your trademark might infringe someone else’s is not that simple. For one thing, a trademark that is similar to but not the same as another could infringe that other trademark.
Our law firm conducts “availability” (or “clearance”) searches to determine whether any trademarks currently in use are likely to conflict with your trademark (although they cannot guarantee availability).
We strongly recommend ordering a search before you begin using a trademark, or, if you’re already using it, before you file an application to register. This can avoid wasting a lot of money, time, and energy on developing and building a reputation around a mark that you’ll ultimately have to change.
For additional information about selecting a trademark, see the following the U.S. Patent & Trademark Office’s Trademark Basics. This resource provides a great introduction to trademarks, including how to select a mark and information about the registration process and includes a series of instructional videos titled Basic Facts About Trademarks: What Every Small Business Should Know Now, Not Later.
Since 2001, our team has helped clients safely use and protect their company names, brands, logos, and taglines. We have represented:
- Family-owned businesses
- Entrepreneurs and individuals
- International companies
- Educational institutions
Our clients come from a range of industries, including
- Restaurants
- Brick-and-mortar retailers
- Online retailers
- Manufacturers
- Consultants and other service providers
- Software and video-game companies
We appreciate that each client’s needs, goals, and resources are unique, and we work with each client to assist them in choosing the options that are right for them.
Among other things, we help our clients:
- Vet the trademarks and other identifiers they want to use and assess any risks in using them
- Strategize and secure the optimum protection available for the client’s trademarks
- Stop others from infringing the client’s trademarks
- Defend against charges of infringement
- Negotiate co-existence and licensing agreements when necessary to protect the client’s rights
In one brief, free phone call, we will:
- Explore your situation and discuss your goals
- Point out any risks you may face
- Identify the options available to you
- Discuss the pros and cons of those options
- Help you make the decisions that are best for your business
- You gain trademark rights simply by using a trademark. Registering your trademark with the Patent and Trademark Office broadens your rights, but it’s not a requirement to obtaining rights.
- Therefore, not finding the mark you want to use in the Patent & Trademark Office database doesn’t mean your mark is safe to use; if someone else is already using it (or a mark similar to yours), they may be able to prevent your use, even without a registration.
- Minor variations in someone else’s trademark probably aren’t enough to keep you from infringing on their mark.
- It is difficult, and may be impossible, to protect a trademark that describes your product.
- Failing to find a particular trademark with a Google search doesn’t necessarily mean it’s safe for you to use the mark.
- Registering your company name with the Secretary of State does not ensure your right to use the company name as a brand or trademark (or to prevent others from doing so).
- Registering a domain name does not give you the right to use that name as a brand or trademark (or to prevent others from doing so).
- Registering your trademarks does give you much broader and stronger rights in them.
Gretchen McCord advises our company on global matters of trademark strategy, registration, disputes, and negotiations, with a focus on litigation avoidance. Gretchen has consistently demonstrated mastery of her practice of law in these areas and has been artful and successful in resolving matters ranging from addressing investor representations and warranties to resolving international trademark disputes. Additionally, Gretchen delivers real value for the price, not just because she competes by charging rates below those of large law-firms, but because interacting with Gretchen is fast, easy and reliable, thereby reducing her billable time (the primary cost of engaging legal counsel).