Trademarks: Why Register & Strong Trademarks

As discussed in a prior post, a trademark can be a logo, symbol or slogan that identifies a business’s products or services. Trademarks provide legal protection for a brand and help protect against counterfeiting or fraud. Today, I’ll discuss the scope of protection, registering with the United States Patent and Trademark Office (USPTO) and elsewhere, and what makes for a strong trademark. In my next post, I'll discuss the likelihood of confusion test, which the USPTO uses when assessing trademark applications.

Unregistered Trademarks & Scope of Protection

The scope of protection offered to a trademark depends on whether the trademark is owned or registered, where it is used, and in what type of business it’s used. If you create a logo and start using it in your business, you are now a trademark owner. You only have rights in the geographic areas you operate in. However, if you want to expand your business across state lines or nationally or want to register overseas, it’s best to register at the federal level with the USPTO. 

Registering with the USPTO & Benefits

Here are some benefits and reasons to register with the USPTO:  

• You have rights throughout the entire US and its territories.
• Your trademark is listed on the USPTO database, providing anyone doing a trademark search notice that the mark is in use.
• You may bring a lawsuit in federal court.
• Registration proves ownership of the trademark and your right to use it.
• You can use your federal registration as a basis for registering in other countries.
• A registered trademark is an IP asset that adds value to your business.

If you’re thinking of registering your trademark, it’s a good idea to search the USPTO database, state trademark databases, and business name databases to understand if there are other businesses out there using trademarks in your industry that may be similar to yours. A trademark attorney can conduct the search for you as well as file the application. 

A trademark application must be based on your actual use of the trademark in business or an intent to use the mark (if it isn’t in use yet), for the goods or services you list in the application. Your application must list out the proper trademark class for your mark, which are categories of goods or services that your trademark will be used for. The USPTO will search for conflicts in those classes and reject applications where they find conflicts. Products may also fall into multiple classes.

Strong Trademarks

The best and strongest trademarks are "inherently distinctive", and fall into the below categories:

• Fanciful trademarks: words that are made up. Example: Exxon, Pepsi.
• Arbitrary trademarks: words that are used differently from, and have no association with, their dictionary definition. Example: Apple Inc., which sells the ubiquitous iPhone, has no association with the fruit itself. 
• Suggestive trademarks: words that suggest or describe the quality of the service or product without actually saying explicitly what it is. Example: Jaguar, to suggest the cars are fast.

In contrast, weak trademarks are not registrable and are hard to defend against competitors. They tend to be descriptive (only describing some aspect of the goods or services) or generic (everyday names). For both of these, they don't sufficiently identify the source of products or goods.

Registering at the State Level & Abroad

If you choose to register your trademark only in the state you sell your products or services in, be aware you’ll only have protection in that state, which is problematic for businesses that sell nationally or that intend to expand. Also, not every state has a trademark database, so searching may be tough. For more info on registering with each state, check here. 

You may register your trademark in other countries through the Madrid Protocol, which provides a convenient way to register in multiple participating countries. The Madrid Protocol is an international trademark registration treaty with more than 120 countries, through the World Intellectual Property Organization (WIPO). Note that applications through the Madrid Protocol still require each country’s trademark office to review the application, and that there is no such thing as a worldwide registration. Alternatively, you can register in each country separately without using the Madrid Protocol.