Before placing a label on your products, consider registering your trademark

What are trademarks?

Trademarks represent your goodwill, the reputation of the goods and services you provide. They are an essential part of a business and they help people tell the difference between products and services from different sources.

They are typically embodied in the following:

• Business Names
• Logos
  
• Slogans
• Domain Names

• Product Packaging/Configuration
• Website Design
• Non-Conventional Trademarks (Colors, shapes, smells, scents, etc.)

But not all words, logos or slogans can be registered as trademarks. For instance, most IP registration offices will not register marks that contain surnames, flags and governmental emblems; a name or likeness to a deceased official; marks that are deemed immoral or scandalous (the stance on this highly varies from one region of the world to another); the title of a single book and/or movie; and matter that is used in a purely ornamental manner.

Trademarks are meant to inform consumers regarding the source, the origin of the goods, not to describe the goods themselves. This is why the strongest marks typically have no meaning in relation to the goods or services for which they are used (ex: Nestlé).

The more distinctive and arbitrary a mark is the wider the mark’s scope of protection will be. On the opposite end, the generic word for a type of product or service (such as blow-dryer to describe a device blowing hot air) will typically not be afforded a registration. This is because the generic word adequately describes the product, but doesn’t provide any indication as to its source. Furthermore, it would amount to granting the applicant the right to hog a generic name and prevent others from using it in any commercial setting.

Finally, another typical ground for refusal of registration by authorities is what is known as “likelihood of confusion.” This occurs when the mark you want to register is similar to that of a third party and is used to describe related goods and services.

How to protect your trademarks?

• Choose a strong mark by avoiding descriptive “generic” names, instead pick a “fanciful” or “arbitrary” mark. The less obvious your trademark is, the better off it is.
• Conduct a thorough trademark search, and make sure the trademark is available in the first place!
• Make sure you select the proper class of goods for your trademark, and decide whether to register a standard character format mark, or a styled (design) format mark.
• Use your mark appropriately and consistently, and use the appropriate registration symbol. This will make it easier for your customers to find you.
• Know whether the mark is already being used in your own region or in  international commerce (if not, an "intent to use" application must be filed)  

• Vigilantly monitor for infringement. For example, review your marks and brand on a weekly basis on search engines. You can use Google Alerts and social media monitoring tools including Hootsuite, TweetDeck to monitor key terms and to automate the monitoring process.
• Trademarks are like a “muscle that gets stronger with use” - use it, own it, and more people will recognize it!
• Take action as soon as you discover infringement, for example, by consulting an attorney and sending a ‘cease and desist’ letter.
  

 

How Do I Apply for a Trademark?

There’s a lot of digging that you can do on your own by performing a basic web search and on the USPTO's Trademark Electronic Search System (TESS) database.

Some companies may offer to help you with your application or evaluating the market value of a potential brand but unless there’s an attorney on staff, these companies will not be able to help you out with any official letters received during the registration process. So you may end up incurring additional fees. While some registration offices such as the French INPI or the Intellectual Property Office in the UK provide paying pre-registration clearance services, the USPTO does not conduct prior trademark searches and is not habilitated to give you legal advice.

For those reasons, many applicants hire the services of an attorney to help them navigate through the process by conducting a comprehensive trademark search (including on those trademarks that are not necessarily registered), and preparing responses to any refusals or requirements that a registration office may issue.

For start-ups in the US, reduced-price options may be available from the registration office or from your local bar association through “pro bono” divisions or law school clinic programs.

What are the common Trademark Pitfalls?

Committing to a mark without having performed a search on pre-existing similar trademarks. Before you engage efforts and money into developing a trademark (for instance by designing a website or printing packaging bearing your trademark) make sure you do a comprehensive search for similar marks. This will avoid costs and glitches during the application process.

Believing domain name business name registrations can afford trademark protection. A domain name can function as a trademark so long as it is used in a way that it identifies the sources of particular goods or services. For instance, Amazon.com is used both as a web address and as a trademark. But each protection required two separate registrations: one with the domain name registry one with the USPTO. Just like a domain name can become a trademark a business name can also be used to describe goods and services. But there again, two separate registrations are required.

Postponing filing an application. Trademark rights are often created by your use of your mark in commerce and not through registration. While registration is not required it will enhance and help you prove your rights. A registration creates the legal presumption that you are the legal owner of the mark and that as such you have the right to use it in the country where it was registered. It informs other people that you are the owner of the mark and often is a prerequisite to act against infringers before courts. In the US, a Federal registration also gives you the right to use the ® symbol.

Not checking on the availability of the corresponding domain name. Trademarks and domain names are different. To avoid potential conflicts, make sure both the trademark you wish to use and the corresponding domain names are available for registration and that no related goods or services are branded in a similar sounding-, looking- or feeling-fashion.

Not using the trademark or otherwise failing to control how it is used by licensees. While this is not the case under the European Union’s Community Trade Mark Regulation, in the U.S., trademark applicants must certify that they are using or have a good faith intent to use a mark in connection with specific goods or services. Accordingly, failing to use the trademark in commerce may result in weaker or harder to demonstrate rights. Similarly, rights in and to a trademark may be lost when licensed to third parties without quality control over how the trademark is used. To avoid this you should always retain some form of quality control over licensed goods or services bearing your mark and ensure you put all licensing terms into writing.