What does a trademark protect?
Trademark protection starts long before the application is filed with the United States Patent and Trademark Office (“USPTO). It starts with selecting a trademark that can actually be protected. As an intellectual property attorney, one of my greatest challenges is the marketing department of my client. Marketers tell clients to choose a trademark that “describes” the client’s services and/or products. That is the worst thing a client can do. Unless, of course, they want to delay the process and risk never getting their trademark registered. The most important thing to know is that trademark protects distinctive marks, not descriptive ones.
The more descriptive a trademark, the weaker it is. When a chosen word, phrase, logo, or design is weak, it does not garner the trademark protection the owner desires, Even if the weak trademark gets registered, it will be harder to prevent others from using it. Ideally, an applicant wants their trademark registered on the Principal Register. That would entitle the trademark to the presumption that it’s valid. A secondary trademark register for weaker marks is called the Supplemental Register. It provides fewer benefits as compared to the Principal Register. The Supplemental Register is for trademarks that are not distinctive. That said, a trademark over time could turn their nondistinctive trademark into one that is distinctive. That potentially can happen with use and effective marketing.
Strong Trademarks are Distinctive.
In trademark parlance, the most distinctive trademarks are either coined or fanciful, or they are arbitrary. Coined or fanciful trademarks are those created solely to function as a trademark. Examples are Google, Pepsi, Xerox, Exxon, TIVO, Pinterest. Arbitrary trademarks comprise words that would normally not be put together. Examples are Apple for computers, Dominos for pizza, Camel for cigarettes, Facebook for social media venue, Instagram for file sharing website, When counseling clients, I suggest they make up a term and then, market it to the hilt. The key is to secure a strong, distinctive trademark.
Comprehensive Trademark Search.
The second most important step in the trademark process is clearance. Before you file an application it is wise to perform a comprehensive trademark search. Some people think a “knockout search” will suffice. A knockout search is a cursory search. It’s quick, easy, and not detailed. It provides the bare minimum of information. Personally I find them useless. They don’t provide sufficient information one needs to identify the potential issues an applicant might face. That is where a comprehensive search comes into play. When I am performing a comprehensive trademark search I take into account a number of factors. Here are just a few:
- USPTO registered trademarks that look or sound like my client’s proposed mark
- Trademarks that were registered with the USPTO but have been cancelled; I want to know why
- USPTO applications that have been abandoned, and I want to know why
- State registries
- Online to see if a mark is in use even if not registered (common law trademarks)
- and so much more
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