How to Trademark a Product Name
How to Trademark a Product Name is part of our How to Trademark series.
A trademark (or service mark) is a word, logo, symbol, or something similar that uniquely identifies your business as the source of a product. In this manner, a trademark facilitates the accumulation of consumer loyalty, which, if nurtured carefully, can allow your business to maintain market share, successfully enter new markets, launch new products, and achieve profitability.
How to Trademark a Product
Filing a trademark for a product name is the same as filing a trademark for any other word or name. You just must be sure that it designates the source of goods.
A legally protectable product name trademark will have three basic characteristics:
- It will serve as a source identifier;
- It will be unique; and
- It will be used in commerce in relation to the sale of goods.
To be legally protectible on a nationwide basis, a trademark should be registered with the U.S. Patent and Trademark Office (“USPTO”). Here are some of the more important issues to be considered and steps to be taken when registering a product name as a trademark.
Step 1: Ensure the Trademark is Legally Sound
The first step in successfully obtaining a trademark registration is to ensure that the proposed trademark is legally sound. Registration of trademarks is governed by the federal Lanham Act. See 15 U.S.C. §§ 1051 et seq. The Lanham Act sets out requirements and restrictions for what is allowable as a registered trademark. As an example, the Lanham Act prohibits registration of a trademark that contains a government flag. In terms of positive requirements, the Lanham Act requires that the applicant be using the trademark in commerce or that the applicant has a bona fide intent to use the trademark in commerce. Furthermore, a trademark must be distinct and must uniquely identify the source of the product. Thus, the words GOOD DAIRY as a trademark for a dairy business will probably be rejected because GOOD DAIRY is too generic and common. Descriptive trademarks are better from a marketing perspective than from a legal perspective. The best options for a trademark from a legal perspective are fanciful trademarks, arbitrary trademarks, or suggestive trademarks.
After a trademark application is submitted, it is reviewed by a Trademark Office examining attorney. If the proposed trademark does not comply with the requirements of the Lanham Act, registration will be denied. Therefore, careful attention should be paid to ensuring that the trademark is legally sound before filing the application.
Step 2: Conduct a TESS Trademark Search
The second step in successfully obtaining a trademark registration is conducting a trademark search of existing trademarks. Our professional fee for a trademark search is $300. A proposed trademark cannot be registered pursuant to the Lanham Act if it is the same as or is confusingly similar to a trademark that has already been filed. The USPTO maintains a searchable online database of active registrations and pending applications called the Trademark Electronic Search System (“TESS”). There are over 2.5 million active trademark registrations.
An effective TESS trademark search will identify potential conflicts between a proposed trademark and one that has already been filed. Conducting a TESS search early in the process saves time and money. If a conflict is discovered, the proposed trademark can be modified or possibly goods/services for which the trademark is being sought can be changed. Sometimes those types of changes will make the application successful on the first try.
Step 3: Choose the Class of Goods/Services for Registration
The third step in successfully obtaining a trademark registration is to choose the class or classes of goods/services for which the trademark is being sought. A registration is only applicable for the class of goods or services for which it has been approved. A single application can be filed for a given trademark with multiple classes of good/services being selected. However, separate application fees are charged for each class selected.
As an example, imagine a trademark related to a comic book being made into a movie. Potentially, such a trademark might be used with dozens of classes. Obviously, the trademark will be used for books (class 16) and for movies (class 9). But the trademark also might be used in these classes:
- Jewelry: class 14
- Furniture (like a child’s bed): class 20
- Decorative arts (like figurines): class 21
- Textiles (like rugs): class 24
- Clothing and wearing apparel: class 25
- Games and toys: class 28
- Entertainment services: class 41
Careful attention should be paid to which classes are best suited to the trademark registration being sought and to the applicant’s current and future business plans.
Step 4: Prepare and File the Application
The fourth step in successfully obtaining a trademark registration is to prepare and file the application. Our fee to file a trademark application is $650. Among the information that must be provided is the following:
- A drawing of the proposed trademark replicating the trademark as it has been used in commerce (or will be used)
- The class or classes of goods/services with which the trademark is to be associated
- A specimen of use showing the trademark in commerce
A complete and properly supported application will help ensure that the process runs smoothly and will help increase the chance of the application being approved on the first try. Failed applications are common. The USPTO typically only approves applications without any issues about 20% of the time. Each year over 500,000 applications are filed, while over 100,000 are abandoned annually. If an application is abandoned, withdrawn or rejected, a new application must be filed which means that significant time has been wasted and the filing fees have been lost.
Step 5: Monitor the Application until it Registers
The fifth step in successfully obtaining a trademark registration is to monitor the application and respond to any questions or correspondence from the Trademark Office. As noted, every trademark application is reviewed by a Trademark Office examining attorney. It takes about four months for an examination to begin. If there are problems or concerns, the examining attorney will issue an office action. Sometimes the issue can be resolved easily, such as a request for more information or documentation. Sometimes the issue is complex and can result in a substantive office action based on a likelihood of confusion.
Once an application meets with the approval of the examining attorney, the proposed trademark is published in the USPTO’s Official Gazette. Owners of similar trademarks can challenge registration by filing a notice of opposition if they believe a proposed trademark is too similar to their trademark. If an Opposition cannot be resolved through negotiation or agreement, then the Trademark Office will schedule an administrative hearing before the Trademark Trial and Appeal Board. If the Opposition succeeds, the application will be denied. If the Opposition fails, then the application will be approved and the registration will issue.
If the application is satisfactory and there are no legal insufficiencies or oppositions, the application can register in as little as 9 months.
Remember to Maintain Your Trademark
Once you have your trademark registration, it must be defended from infringement and periodically renewed. You should begin immediately monitoring the marketplace for infringing activity and potentially infringing trademarks. If you notice an infringement a trademark cease and desist letter is a typical first step.
Your trademark will only last six years without filing renewal documentation with the USPTO. Between the fifth and sixth years after the trademark registers, the Trademark Office requires that the trademark be renewed. At this time a Section 15 should also be filed to achieve incontestability. Another renewal must be made in the ninth year and, thereafter, every 10 years after registration. Failure to maintain and renew a trademark will cause it to abandon and be marked dead.
For assistance in registering your product name trademark, please contact us today for a consultation.