Registering Your Trademark

In this post, I discuss the process and requirements of registering your trademark, a great way to protect your intellectual property.

*Photo by NCinDC is licensed under CC 2.0. *

Most of us are familiar with the concept of trademarks. From Coca-Cola’s cursive writing to Walmart’s yellow spark, a trademark calls out a particular business and brand.

What is a Trademark?

A trademark is a valuable asset for even small businesses because it identifies a business’s products to the public. It distinguishes the product of one business from that of another. (A service mark is essentially the same as a trademark, except that it identifies the source of a service rather than the source of a product. The word trademark, however, is often used to refer to both trademarks and service marks.)

Acquiring Rights In the Mark

In the United States, a business utilizing a mark in interstate commerce is able to register its mark with the United States Patent and Trademark Office (USPTO). A business using a mark exclusively within one state can usually register its mark with the office of its respective Secretary of State. This article, however, will exclusively discuss the registration process established by the USPTO.

Registration is not, however, required to acquire exclusive rights to a mark. Just utilizing a mark can give you those rights—assuming no one else already has the rights to that mark. This is known as a common law trademark and can make verifying the right to use a mark particularly difficult.

As I will discuss in a later post, however, there are significant advantages to registering a mark rather than simply relying on the use of that mark to establish your rights. Registering a mark provides you with much clearer rights to the exclusive use of the mark than simply relying on prior use.

Selecting a Trademark

Selecting the mark you want to represent your business is an important early step in establishing your brand. Not every mark is registrable with the USPTO, nor are all marks capable of serving as trademarks. There are therefore a variety of factors to consider.

Likelihood of Confusion

The USPTO will not register a mark that could be confused with another registered mark. The mark you are attempting to register does not have to be identical to another mark for it to be refused. Mere similarity may be enough. If the buying public could reasonably believe that the products or services represented by the mark could come from the same source as those products or services represented by a previously registered mark, the USPTO will refuse to register the new mark.

So, for example, attempting to trademark the name “Apple Electronics” for your startup business selling electronic parts would likely be disallowed because of its similarity with Apple Inc. The USPTO, however, may accept the trademark “Apple” for a clothing line, as it is unlikely that people will think your Apple clothing line originated with the company founded by Steve Jobs.

These decisions are made at the USPTO’s office, and there is no definitively objective metric for determining the existence of potential confusion. Consequently, your trademark application must be carefully drafted with an effort to avoid potential confusion with other marks. This is an area where the assistance of an attorney can be particularly valuable.

If the USPTO rejects your application because of potential confusion with another mark, they will not refund your application fee, which can range from $275 to $375. A search of other marks should therefore be conducted prior to selecting your mark for registration—and indeed, before using a mark at all.

Strength of the Mark

The strength of your mark may also affect its registrability with the USPTO. Inherently distinctive marks are much stronger and easier to register than marks that simply describe the goods or service sold. In a future post, I will explore this concept in more detail and lay out the different levels of strength used to describe marks.

Other Potential Grounds for Refusal of Registration

There are some marks that cannot be registered. Surnames, geographical locations, marks that are insulting or offensive, foreign words that translate into English words that would not be registrable, and the titles of a single book or movie are a few examples of nonregistrable marks.

Sometimes nonregistrable marks can become registrable, however, if after a long period of time they become uniquely identifiable with the applicable product or service.

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Sources:

Protecting Your Trademark: Enhancing Your Rights Through Federal Registration

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See Also:

Maintaining a Trademark

Do I Need a Lawyer to File a Trademark Application?