How to Trademark
There are four basic steps to obtaining a valid trademark. First‚ a company should create the name‚ word‚ logo‚ symbol‚ etc. for use in conjunction with their products. Second‚ a trademark search should be conducted before using a trademark in commerce to ensure that a confusingly similar trademark is not already in use. Third‚ if a confusingly similar trademark is not currently in use‚ the company may file a trademark application and begin using the trademark in commerce.
Use in commerce of an original trademark triggers common law trademark protection and helps to establish priority for registration or infringement actions. A company may apply for trademark registration once they have used the trademark in commerce or when a bona fide intent to use the trademark exists. Once a valid trademark is obtained‚ a business should continue to monitor its trademark to ensure it is not being infringed.
Creating a Trademark
In order to become a valid trademark‚ it must be distinctive. A trademark can either be inherently distinctive or can acquire distinctiveness through secondary meaning. In order to obtain a valid trademark more quickly and easily‚ a company should strive to create a trademark that is inherently distinctive. There are typically five levels of distinctiveness: generic‚ descriptive‚ suggestive‚ fanciful‚ and arbitrary.
Generic words such as soda‚ soap‚ etc. can never become valid trademarks‚ as they simply state the generic name for a product. Descriptive trademarks such as California Cheese may become valid trademarks. Such marks‚ however‚ must obtain secondary meaning through use in commerce before they become eligible for protection. This process requires using the descriptive mark in commerce until an association develops in the minds of consumers connecting the source of the product with the descriptive trademark.
Suggestive‚ fanciful‚ and arbitrary trademarks do not simply describe the product. Instead‚ a suggestive trademark requires that consumers use their imagination to make the connection between the product and the trademark. With fanciful and arbitrary trademarks‚ there is no connection between the trademark and the type of product. Because these trademarks do not simply describe the product‚ they are considered inherently distinctive‚ and capable of strong protection if the trademark is used in commerce and there is no prior user.
Before considerable money is expended to brand a product‚ it is advisable to conduct a trademark search to determine whether that trademark or a similar trademark is currently in use by another. This is because the rights of competing trademark users are largely determined by which company can establish prior use. The trademark holder that can establish that they were either the first to use the trademark in commerce or the first to file a trademark application usually has superior rights.
A trademark search is conducted by examining the trademarks on file with the United States Patent and Trademark Office. While trademark searches can be conducted by anyone‚ many businesses hire trademark attorneys or trademark search firms to conduct a thorough search. If the search yields no conflicting trademarks‚ the product is ready to be used in commerce. However‚ if the same or a confusingly similar trademark is currently being used in commerce‚ use of that trademark may subject the second user to a trademark infringement or dilution action.
Use In Commerce
Use in commerce is required for registration and is a means of establishing priority over a particular trademark. Once a business has determined through a trademark search that the trademark is available for use‚ its next step is to use the trademark in commerce. Use of a trademark in commerce establishes priority over subsequent users with the same or confusingly similar trademark. If another business attempted to register that same trademark for their products and services‚ the original user of the trademark could oppose the trademark registration‚ or file a letter of protest‚ alleging that it had prior use of the trademark. In addition‚ when a trademark is used to identify products or services in interstate commerce‚ the trademark holder qualifies for common law trademark protection.
For Federal Trademark Registration‚ the use in commerce requirement necessitates that the trademark be used in commerce capable of congressional regulation. In other words‚ the trademark must be used in interstate commerce‚ commerce between our country and another country‚ or on products that have a substantial effect on interstate commerce. If a product bearing the trademark is for sale in multiple states‚ advertised in multiple states‚ or crosses state lines in its distribution‚ the trademark is likely being used in interstate commerce. In contrast‚ if the trademark is used exclusively in one state‚ it may be ineligible for federal protection. In this case‚ the trademark may be eligible for state registration.
While offering a product in commerce‚ it is important to mark all trademarks that have not been registered with the TM symbol. This symbol communicates that‚ while the trademark is not yet registered‚ the user is asserting rights in that trademark. Once a trademark is federally registered‚ the ® symbol should be used to indicate a registered trademark.
Once a company has actually used such a trademark in commerce‚ or has a bona fide intent to use that trademark in commerce‚ it may apply for registration of its trademark. Once a trademark has been registered on the Principal Register‚ the holder of that trademark may gain presumptive rights throughout the entire country. In addition‚ others are considered to be on “constructive notice‚” that the trademark is unavailable for use. The constructive notice element requires market participants to have conducted a trademark search before using a particular trademark.
While registration of a trademark is not required‚ a number of advantages accompany successful registration. In addition to granting presumptive rights‚ registration puts other market participants on constructive notice of your trademark because it appears on the federal registry where it can be found during a trademark search. Furthermore‚ a registered trademark acts as a strong deterrent to would-be infringers. It also allows the trademark holder to pursue all available actions for trademark infringement and dilution in federal court. Finally‚ after continuous use of a registered trademark for five years‚ the trademark holder can apply for incontestability. Once a trademark has become incontestable‚ the ability to attack the registration‚ and the defenses available to an infringer in the event of an infringement‚ become limited.
Monitoring your trademark
Finally‚ once a trademark is properly registered‚ its owner should continue to monitor its use to be sure that it is not being infringed or otherwise weakened. The owner of a trademark can file an opposition with the USPTO to attempt to block the registration of similar trademarks‚ and can also file a letter of protest. In addition‚ the trademark holder must continuously use the mark in commerce. Failure to use the trademark can constitute abandonment which may result in a forfeiture of trademark rights.