Selecting and Protecting a Trademark
Selecting And Protecting Your Trademark
The first consideration for brand management is selecting a strong and distinctive trademark. Courts generally afford distinctive brands a broader scope of protection. Your brand should be unique and allow your customers to readily identify you and your product. Consideration should also be given to including a tag line that provides the description.
In contrast to an inherently distinct brand, “descriptive” marks immediately communicate an attribute or benefit for the intended user of the good or service. Absent a showing of long-standing commercial success of descriptive terms and commerce, the law does not recognize descriptive terms as trademarks. Then there are generic terms – words that describe a whole group or genus of goods or services and cannot distinguish one product within that group from another. A mark that is generic cannot be protected as a trademark. For experienced help with trademark creation, turn to Coats & Bennett, PLLC.
Investigating Your Trademark
The second consideration is making reasonable efforts to determine whether the same or similar marks may already be in use. At Coats & Bennett, PLLC, our attorneys can determine if your mark would be in a crowded field of similar marks or if a prior user would allege that your mark infringes its trademark rights. For some businesses, given the scope and nature of their anticipated use, a clearance may not be necessary.
In conducting a full trademark clearance, our attorneys often screen the new mark against state and federal trademark registrations and applications, as well as against common-law databases of trademarks and internet URLs. We will look for any potentially confusing marks, including those that are similar in appearance, in spelling or phonetically, or that share a dominant characteristic. We review brands from all industries to protect against treading on famous brands. We can also examine images and foreign markets.
A state agency granting a legal name (such as a corporate name from a secretary of state) should never be confused with clearing a brand. Similarly, a refusal by a state agency to register a corporate name because it is too close to another entity does not mean that your trademark would infringe the other entity’s trademark rights. For example, a company that sells pickaxes in hardware stores under the name “HACKET” is not likely to infringe the trademark rights of a company that sells cough medicine over the internet under the same name. Our lawyers have extensive experience in conducting these brand clearances.
Protecting Your Claim
Once you select a mark, there are benefits to registering the trademark with either the United States Patent and Trademark Office or state registries. Federal registration will give you presumptive rights nationwide, provide constructive notice through the federal registry of your trademark, and provide additional causes of action and evidentiary presumptions if someone infringes your trademark rights.
You will want to consider “policing” the brand for usage by third parties. Your brand’s success will likely generate imitators, who can dilute the strength of your brand, making your trademark less effective and more difficult to protect in court. In extreme cases, once protectable trademarks become generic through extensive third party use of the brand to refer to the genus of goods or services. This is known as genericide, and examples of such “former” marks include ASPRIN, ESCALATOR, KLEENEX and JELLO. As a result of these threats, brand owners routinely retain trademark attorneys to monitor the U.S. Patent and Trademark Office and other databases for evidence of infringing and diluting brand usage by third parties.