With a business, branding is everything. From McDonald’s iconic “Golden Arches” to Nike’s catchphrase “Just do it!”, any savvy company is best served in protecting its intellectual property, and there’s no better way to protect your brand than to register a trademark with the United States Patent and Trademark Office (USPTO). Registering a trademark provides federal protection from infringement and entitles you to statutory damages. Trademarks can be images, names, or phrases, so long as they represent your business.
Getting Started
Since the application is a sunken cost that is non-refundable, regardless of whether the mark is approved, it is advisable to perform a search on the USPTO trademark search engine, to see what possible “competition” you might have for your mark. The link is here – Trademark Search Trademark Search (uspto.gov). The 45 International Classes cover any goods or services that a business might provide. It is advised to only be concerned with the International Class(es) that would apply to your mark. It’s why Dove Soap and Dove Ice Cream can co-exist. Trademarks exist to prevent consumer confusion, so ideally an individual wouldn’t take a bite out of a bar of soap, nor would they rub a chocolate-covered ice cream bar under their arms in the shower.
5 Levels of Distinction
Also, even if your mark is not found in the search engine, we will need to make sure that it has a certain level of distinctiveness. There are five levels of distinction for trademarks with the stronger the distinctiveness is, the more likely you’ll be approved for registration.
I. Fanciful
The highest level is “Fanciful.” This is a mark that has no relation whatsoever to the goods or services being offered and is also created solely to represent the good or service. Things like “Adidas” or “Xerox” are examples, as those words did not “exist” before the companies created them.
II. Arbitrary
The next level is “Arbitrary.” This mark is a word that has been known to the populace before the application/use of it as a mark, but it is wholly unrelated to the goods or services provided. Things like “Apple” or “Starbucks,” as if you’d never known of the computer company or the coffee chain, you’d be hard-pressed to assume what the companies do.
III. Suggestive
The third level is “Suggestive.” These marks suggest the product or service offered, without explicitly saying it. For example, even if you’d never heard of the chain, if I asked you if you wanted something from “Burger King,” you’d assume that it was a restaurant of some sort, probably selling hamburgers.
The next two levels are difficult, in terms of justifying federal protection.
IV. Descriptive
The “stronger” of the two is “Descriptive.” These marks describe the purpose, nature, or attribute of the product or service and are not considered to be eligible for registration. However, in exceptional circumstances, a descriptive mark could be registerable if it has acquired distinctiveness—through long-term usage in the eyes of consumers. When possible, you always want to argue that your mark is “Suggestive,” rather than “Descriptive,” and this is a common area where you’ll receive an office action from the USPTO, where they’ll claim it is the latter, and you’ll want to argue that the former applies.
V. Generic
Finally, the weakest mark is “Generic,” and it will never be protected, as it is too commonly used to have any distinctiveness. For example, I couldn’t trademark “Computer” or “Phone,” by themselves, as they are the names of the products they represent. (That being said, “iPhone” is a Suggestive mark, through the use of the letter “i” at the front of the name.) Also, a brand can be a victim of its success, in that it has come to dominate the market and as such, the brand name represents not just the particular product line, but the type of product in general. (Think of “Kleenex” being interchangeable with “facial tissue.”)
Even if you do get a refusal or opposition to the mark, once you’ve applied (an “Office Action”), you will have the ability to respond to that office action to state your case why their refusal is not well-reasoned, so know that you can always fight back against a refusal.
At some point in the application process, you must show that the mark is in use in commerce. If you have an idea for a slogan or a logo, but don’t have it currently used to represent your business, you can still file to register the trademark, but at some point, you will need to show that it is being used by your goods or services.
Give Us a Call
The experts at Saunders, Walsh & Beard are more than happy to assist you with any questions or needs in registering a trademark, renewing a trademark registration, or defending against an Office Action. The trademark process is a lengthy one, where applications submitted aren’t reviewed for ten months, as of 2023. You want to make sure you have a professional on your side to save you the time and stress of undergoing this process alone.
