Securing a trademark can be quite simple. Typically, clients approach us with a symbol or slogan that identifies their goods or services. We then perform a basic trademark search to ensure that there are no previously registered and directly conflicting marks. Finally, we file a trademark application with the US Trademark Office. Once approved, the mark is registered!
Choosing Your Trademark
Choosing a trademark can be a daunting task. We lay out few basic guidelines for choosing a mark to ensure that you have the strongest trademark possible.
DistinctivenessTo be eligible for protection marks must be distinctive. Some marks are considered inherently distinctive. A mark is inherently distinctive if its intrinsic nature serves to identify a particular source. They almost automatically tell a customer that they refer to brand. Other marks, must acquire distinctiveness. Generally, to acquire distinctiveness a mark must acquire what is known as secondary meaning. A mark acquires secondary meaning when in the minds of the public, the primary significance of the mark is to identify the source of the product itself. Over time, the courts have developed a system for classifying a mark’s distinctiveness. Courts have created five different categories, ranked by degree of distinctiveness:
Arbitrary / Fanciful > Suggestive > Descriptive > Generic
Arbitrary / FancifulFanciful marks are marks that are made up, and have no meaning other than their trademark meaning. Ex. Kodak, Exxon, and Xerox.
Arbitrary marks are those that have a meaning but in no way describe the particular product or service they identify. Ex. Apple, Google, and Subway.
Marks that suggest the nature, quality, or characteristic of the products or services in relation to which it I used, but does not describe this characteristic, and requires imagination on the part of the consumer to identify the characteristic. Ex. Blu-Ray, Microsoft, Coppertone.
Descriptive marks are just that – descriptive. They merely describe the goods or services to which they pertain. Ex. Best Buy. To achieve substantial federal protection, descriptive marks must acquire secondary meaning – which typically takes at least five years.
A generic trademark is a trademark has become the generic name for, or synonymous with, a general class of product or services. Generic terms are not protectable. Marks can be born generic, e.g., Bar-B-Que, or become generic over time. Some examples of famous trademarks that became generic over time include: linoleum, escalator, trampoline, thermos, and yo-yo.
When choosing a trademark for your business, you should always strive to choose trademarks that are either arbitrary, fanciful, or suggestive.
The Trademark Process
- Brainstorm potential marks
- Remember to choose marks that are unique and distinct. Avoid marks that merely describe your product or service
- Use a basic search to determine if someone else is already using a similar mark for similar goods or services
- Remember, the Trademark Office will perform a detailed search to determine if there are any previously registered marks that are likely to confuse others as to the source of the product or service
- File your trademark application online
- There are several different types of trademark applications. The two most common types of applications cover marks that are actively being and used and those that the applicant intends to use in the near future.
- A trademark application can take over a year to process and register.
- When required, the trademark office will issue office actions. Office actions can have a wide range of subject matter, but typically include various reasons for why the trademark is being refused registration. Untimely responses to office actions can result in the abandonment of your trademark application.
- Once approved, the Trademark Office will notify you that the mark has been registered. You now have an official trademark and can use the ® symbol to let the world know.
Interesting Trademark Lawsuit
Rotoworks Int’l Ltd. v. Grassworks USA, LLC, et al., W.D. Ark., No. 07-CV-5009 – After our undercover investigator collected evidence confirming that our New Zealand client’s exclusive U.S. distributor of agricultural equipment was secretly manufacturing and selling knock-offs using bait-and-switch tactics, we obtained a sweeping preliminary injunction, and ultimately a jury verdict, against the U.S. distributor.
In addition to proving infringement of our client’s Rotowiper® trademark by implied passing off, we also established that the genuine Rotowiper’s aqua color scheme was protectable trade dress.
The jury returned a verdict of $375,000 for intentional trademark and trade dress infringement, and the court additionally awarded $191,699 in attorneys’ fees. In an unusual step during deliberations, the jury sent a note to the Court asking for a calculator, which we understood to be excellent news when waiting for them to return a verdict in our client’s favor.