[Updates an earlier Post from December 30, 2015]
So, you’ve decided to launch a brand name in the U.S. and are contemplating registering it in the U.S. Patent & Trademark Office (“USPTO”). What can you expect? Not every application is the same, so there will be variations in exactly what happens in the prosecution of your application, but hopefully this article will serve as a “Trademark 101 Primer” to describe the basic process overall. (Note – this post is for general information purposes only and does not provide any specific legal advice. Contact your trademark attorney to discuss any areas of specific concern.)
Basics
What is a Trademark? It’s a word, phrase, symbol or design, or a combination of words, phrases or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark performs the same function as a trademark, but applies to the source of a service rather than of a product. (For simplicity, this post refers to trademarks and service marks collectively as “trademarks.”)
How Valuable is a Good Trademark? The value of a good trademark lies in its ability to convey to the public a single source of a particular good or service. The key is to develop a mark unique enough that customers associate it with your goods or services – and only your goods and services. While temptingly simple, choosing a mark that just describes your goods and services will not create any trademark value. Customers won’t know to distinguish your goods from others in the same market. Instead, pick something that’s arbitrary, or otherwise completely unique. Even coin a new word or phrase as the new brand for your goods or services. Avoid choosing words with simple dictionary meanings, which you might be planning to use exactly as they are defined – because the risk is that you may be selecting a generic term, which can never develop any trademark meaning.
Can Rights Develop Based on Use? Federal registration is not a requirement to protect trademarks in the U.S. – instead, rights in a particular trademark can be established simply based on use in connection with particular goods or services in the marketplace (aka “common law trademark rights”). Nevertheless, federal registration offers more comprehensive protection than reliance upon common law rights, including providing nationwide notice of the owner’s claim to the mark and some other valuable presumptions. Continue reading