Selecting and Securing a Trademark

February 2016

By: Nathan Harris

A company’s trademark is often its most visible and enduring intellectual property asset. Thus, selecting and securing a strong mark that distinguishes the company’s goods or services is a business imperative. Here are ten points to consider in selecting and registering a trademark:

Should you register the mark?

A federal trademark registration through the United States Patent & Trademark Office (USPTO) offers many advantages. A registration gives the mark owner nationwide priority, as of the filing date of the trademark application, against later users of the mark. The registered-trademark symbol (®) itself is often a powerful deterrent to would-be infringers. A trademark registration increases the monetary damages available to the registrant in an infringement lawsuit, and creates a legal presumption that the registrant is the legitimate owner of a valid trademark.

Should you protect a word mark in all its forms, or in a particular style?

Registering a word mark in “standard character” form covers the word in any and all fonts, typefaces, colors, and capitalization schemes. Yet the mark may also be registrable as part of a “design mark” that may include other design elements, such as a logo or particular color scheme. When budget allows, registering a mark in both standard character and design forms provides the best of both worlds.

Is the mark inherently distinctive?

To be registrable, a mark must be distinctive of the covered goods or services. Distinctive marks, including “coined” terms (EXXON for oil) and arbitrary terms (APPLE for computers), are among the strongest types of mark. Suggestive marks, which require thought or imagination to draw a conclusion about the nature of the goods (NOBURST for liquid antifreeze), are also inherently distinctive, strong marks. However, terms that are descriptive (APPLE PIE for scented potpourri) or that are primarily merely a surname (SMITH’S, or GOULD HOTEL) are not considered inherently distinctive, and can only be registered by demonstrating that consumers have come to associate the mark with the goods at issue.

Are there prior users of the mark?

A mark is not entitled to be registered or used when it would create a likelihood of confusion with an earlier registered mark. In the United States, trademark rights arise through common-law use of the mark in commerce, or through filing a trademark application and registering the mark. In considering whether a likelihood of confusion exists, the USPTO and the courts will consider similarities between the marks, similarities between the parties’ goods and services, and any overlap in the channels of trade in which the goods/services are offered, among other factors. 

On what basis will you apply to register the mark?

A trademark cannot be registered in the United States unless and until it is in “use in commerce” here. But a trademark application can be filed based on use or a bona fide intent to use the mark within six months. In the latter case, the mark must actually be used before the USPTO will issue a registration.

How will you prove you are using the mark?

The USPTO requires a specimen of use to prove that the mark is being used in commerce.  For goods, a tag, label, packaging, or point-of-sale display bearing the mark often does the trick; advertising materials and business cards are typically not acceptable, because they are not present when the consumer decides on and completes a purchase.  A webpage may be acceptable if it provides a means for ordering the goods.

Who owns the mark?

A trademark must be used by either the owner or the owner’s licensee. Failure by the mark owner to adequately control use of the mark may lead to loss of the trademark and cancelation of the registration. It’s important to note that individuals come and go from companies, so giving one or more of them ownership rights in a mark is inviting a future dispute as to who owns the mark. Best practice is to have a mark used by a corporate entity registered in the name of the entity.

Will you be using the mark as a source identifier?

A mark does not serve to distinguish goods if consumers don’t perceive it as a source identifier. For example, a slogan on a t-shirt is likely to be perceived as ornamental by consumers, not as a source identifier for the shirt. The USPTO may therefore refuse to register such slogans. Similarly, a corporate name that appears only in regulatory filings or official corporate documents and is not encountered by consumers in commerce may not be registrable as a trademark.

How will you refer to the mark?

The USPTO often researches an applicant’s use of a potentially descriptive mark, so be wary of language on your website or in marketing materials that may give rise to a mere descriptiveness rejection. Consider using the TMsymbol after the mark, which lets the world (including would-be infringers) know that you consider the mark to be a source identifier.

Will you be using the mark outside of the United States?

A federal trademark registration only provides rights within the States, but companies seeking to register their marks outside the United States have a number of options for protecting those marks internationally. Within six months of filing a federal trademark application in the United States, a U.S.-based applicant may file applications in certain countries and have those applications enjoy the priority benefit of the U.S. filing date. Similarly, the Madrid system allows an applicant to file a single international application and designate a number of countries where protection is sought.