Understanding Trademark Protection
Understanding Trademark Protection
The instant your new business or product name is used in the marketplace, trademark considerations come into play. Trademarks are the words, graphic images, tag lines and slogans that you use to advertise and market your products and services.
Unless you are a very small local retail store — like the corner beauty salon or dry cleaner — or you are using your full legal name as your business name, the selection of a great name that you can legally use is essential.
The key to a great name that doesn’t infringe on the rights of others is what we call “brandability.” Essentially, the more unique your name is the more likely you will be to use it. The more distinctive and unique a business or product name, the easier it is to protect from unauthorized use by others.
The ™ Symbol & Common Law Trademark Protection
In the United States, trademark rights come from first use. This common law system grants ownership of a mark to the first party that uses the mark.
The Lanham Act (15 U.S.C. § 1127) enacted by the United States Congress in 1946 provides federal protection for distinctive marks used in commerce. In accordance with 15 U.S.C. § 1125(a), Brandings® has established substrative initial use and has maintained continuous use of the mark under 15 U.S.C. § 1065.
The “TM” designation is recognized by international trademark law. The scope of the Lanham Act is independent of and concurrent with state common law and global trademark law.
Any and all trademark rights including the “TM” designation are transferred to you as part of the purchase. After the transfer is complete you will have 100% ownership and control.
A “Certificate of Purchase and Transfer of Common-Law Trademark Rights” for the mark is available for issue, upon request, at no additional charge. The Certificate documents the date Brandings® established initial use of the mark and attests to the continuous use of the mark under 15 U.S.C. § 106. The Certificate will warrant that the mark is free and clear of any and all liens and encumbrances and that Brandings® has full legal right, power and authority to sell, assign and transfer the mark.
Effective the date of transfer, all claimed rights to the mark, common-law-trademark protection and global constructive notice of ownership, designated by the “TM” symbol applied to the mark, will be transferred to you and your respective heirs, executors, administrators, legal representatives, successors and assigns.
The ® Symbol & USPTO Registered Trademark Protection
For most small and mid-sized businesses the protection provided by the “TM” Common Law Trademark designation is sufficient protection of their brand name.
Registration of a brand name through the United States Patent & Trademark Office (USPTO) and the European Office for Harmonization in the Internal Market (Trade Marks and Designs) can provide a company with an additional level of protection designated by the ® symbol applied to the mark.
Registered trademark protection is not granted for the universal use of a name for every service and every product, but rather it is granted discrete and very narrowly defined specific use.
For example, if you owned a yogurt company called “OnlyYogurt” and your product offerings were limited to yogurt, trademark protection would only be granted for the yogurt and ice cream classification of goods and services. No other firm could use the name “OnlyYogurt” on a yogurt or ice cream product.
That is why the name “United” can be legally used by United Airlines, United Healthcare, United Insurance and United Van Lines without conflict. Each firm maintains a trademark for a name containing the word “United” since they provide good and services in non-competing areas.
When a trademark application is filed, demonstration of exclusive use of the proposed mark for the specific categories and classifications you are using it need to be provided.
Free Trademark Search
You can conduct a basic search yourself by typing the company name into a search engine like Goggle or Bing. You can also take advantage of the free search functions available at the European Office for Harmonization in the Internal Market (Trade Marks and Designs) at EOHIM Search and the United States Patent & Trademark Office (USPTO) database at USPTO Search. This basic search will give you a good idea of how the name is being used.
Factors That Increase A Successful Trademark Application
Names can be categorized on a sliding scale of uniqueness. The most distinctive are invented names, followed by arbitrary names, evocative names, literal names and finally generic names that have no legal protection.
The general rule is this – the more unique the name, the greater the likelihood of a successful trademark application.
Invented Brand Names – ones that made-up names that have been “brainstormed” or “created.” These names are unique, distinctive and highly brandable. Examples of “invented” names in the Brandings® inventory include — Vistle, Septar, Huxy, Aplya, Avoxx, and Zoltus.
Arbitrary Brand Names – ones that are existing words used for products that have no logical relationship to the goods for which the term is used. Examples of “arbitrary” names include “PeachTree” (for a computer software firm), “Virgin” (for an airline company) and “Apple” (for a computer company).
Evocative Brand Names – ones that are elicit or draw forth a positive association. Evocative names are short and meaningful and call up a good feeling. Examples of “evocative” names in the Brandings® inventory include — BlueSurge, Luxcian, Betterings, BlueberrySky, and MostCloud.
Descriptive Brand Names – ones that are fairly straight forward. Literal names follow the primary or strict meaning of the word or words and are not figurative or metaphorical. Examples of descriptive names include — SupplyDepo, VetStores, CherryGlaze, RiverDubai, TryPeru, ContactsOnly, and FuneralAid.
Generic Brand Names – ones that have no legal protection and cannot be registered or protected. “Linoleum,” “zipper,” “escalator,” and “aspirin” are all examples for brand names that were once registered trademarks and are now generic names because of the failure of the firms to maintain distinctive brand identities.
Whether or not you actually register your mark, it is essential to select a business or product name that does not infringe on the trademark or another firm.
Courts have increasingly looked to the name that precedes the Top Level Domain (TLD) for legal protection. For example, if own the domain name Biozyn.com you would look to protect the name Biozyn.
Brandings® Trademark Search and Application Service
Brandings® offers a trademark search and application service for mark registration with the United States Patent & Trademark Office (USPTO). The service includes a trademark search, an attorney-prepared trademark application and ongoing monitoring through the registration process. This service also includes non-substantive responses to the USPTO while your application is pending, and an electronic copy of your trademark registration certificate once your mark is registered.
You’ll receive …
- Federal Trademark Database Search
- 50 State Trademark Search
- Domain Name Registrations
- Attorney-Prepared Trademark Application
- Ongoing Monitoring Throughout Registration Application Process
- Electronic Trademark Registration Certificate (Upon Issuance)
Brandings Trademark Fee Structure:
$1,995 (Flat Fee Trademark Search & Application Service)
$275 to $375 (USPTO Filing Fee) Government filing fees apply per mark, PER class of goods or services. Filing fees are charged when your application is filed with the USPTO.
And now for the stuff our lawyers want us to include: Brandings® makes no representation as to the suitability of a brand name with application in a particular industry or market or for use in a category of good or service articulated in the International Classification of Goods & Services. The decision to grant a trademark application is made at the sole discretion of the USPTO. Brandings® will make every effort to advocate for a successful USPTO outcome. Brandings®cannot and does not guarantee USPTO mark registration. Clients and prospective clients are strongly encouraged to seek counsel to determine suitability and all trademark registration related matters.
Click here to learn more about Brandings® Trademark Search & Application Service.
Whatever your new business needs, we are here to help. Call Brandings® Brand Development Team today at 1-800-852-8900 (Toll Free USA) +1-702-803-6111 (Worldwide) or simply contact us through or online form.