I was pleased to be asked to prepare an article on trademarking for PolskyPedia along the lines of materials I have circulated on trademarks in response to new client inquiries. The intended audience for this post is entrepreneurs starting businesses having questions on whether and how to pursue trademarks.

Q: Do I Want a Trademark?

Yes, of course you do. Surely, branding is an important part of your business strategy. The brand is how your customers will identify you among competitors in the marketplace.

Q: What Is a Trademark?

A trademark is a source identifier. The trademark lets the public know the source of particular goods or services offered under the trademark. The trademark functions as an adjective for particular goods or services that are the corresponding common nouns. A trademark may be a word, phrase, symbol or design, or a combination thereof. Distinctive features such as trade dress, product configuration, sounds, colors, and fragrances may serve as trademarks. For more about trademark types, please see my post on trademark portfolio creation. Unless otherwise indicated, the type of trademark under discussion is a word US trademark, for explanatory purposes.

Q: What Are the Different Symbols and Jurisdictions?

The “circle-R” symbol ® signifies federal registration under US trademark law. A benefit of federal trademark registration is that notice of your trademark extends nationwide. As an alternative or preliminary step to federal trademark registration, the designations TM and SM are available for all trademarks and service marks, whether or not federally registered. In contrast to federally registered trademarks, unregistered trademarks may have their protection limited to their geographical areas of use, or reasonably expected geographical areas of expansion. As an alternative or optional filing, individual states within the US may register trademarks on a statewide basis. Looking internationally, each country administers its own trademark laws, where various international cooperation mechanisms exist.

Q: How Do I Choose a Trademark?

Following are general categories of trademarks, ranked from decreasing ease to obtain registration.

Sweet Spot

Generally, the most promising trademark candidates are categorized as fanciful, arbitrary, or suggestive.

Fanciful

A fanciful trademark is limited solely to its trademark use. The fanciful trademark is a made-up word.

• Examples: XEROX for photocopying machines, KODAK for sensitized photographic materials.

Arbitrary

An arbitrary trademark is an existing word whose meaning sits in a context different from the planned trademark meaning.

• Examples: APPLE for computers, AMAZON for electronic retailing services via computer.

Suggestive

A suggestive trademark stirs the consumer’s imagination or perception to reach a quality, characteristic, or nature of the goods or services.

• Examples:  JAGUAR for automobiles, PUMA for sport shoes.

More Effort Involved

Descriptive

A descriptive trademark simply identifies a characteristic or quality of the underlying product or service. The line between a suggestive trademark and a descriptive trademark is sometimes narrow. A descriptive trademark has the additional hurdle of proving that the consumer public attributes a secondary meaning to the trademark that identifies the source of the particular goods or services.

• Examples:  HEALTHY CHOICE for shelf stable prepared entrees and dinners, HOLIDAY INN for motor hotel services.

Q: When Am I Ready to File a Trademark Application?

Your trademark application filing is usually based on current use or intended use of the trademark in interstate commerce, or commerce between the US and another country. Needed now or later is a bona fide use of the trademark in the ordinary course of trade.

Q: What Are the Initial Budget Considerations?

When an appropriate candidate trademark is identified, you may consider having a trademark application filed and in three months or so hear from the Trademark Examining Attorney. You may consider avoiding intense upfront review of trademark candidates beyond apparent knockouts. Similarly, you may choose to steer around potential problems easily uncovered.

Heavy upfront review in many ways resembles the effort of the Trademark Examining Attorney, plus may entail more analysis where we try to work with predictions how the Trademark Examining Attorney will perform the search and review. Waiting to hear back from the Trademark Examining Attorney assumes you can hold off labeling until hearing from the Trademark Examining Attorney. You would need the three months for the initial look by the Trademark Examining Attorney and, assuming everything goes smoothly, another three or more months to await completion of the public opposition period. That’s the smoothest route, although you would know at the three months whether the Trademark Examining Attorney has significant requirements or refusal to register, so you could re-strategize if needed, including potentially deciding to pursue a different trademark or engage in dialog with the Trademark Examining Attorney.

Q: What If the Clock is Ahead of Me?

Just mentioning a further possibility on the upfront review if you need to move forward before the three months time needed for initial review by the Trademark Examining Attorney: we can have an outside searcher get involved. The searcher’s work for the search job when needed before awaiting the trademark application process is cost-effective, although the total cost of the search is often more than having an attorney help you throughout the trademark application process, even though the searcher would have a lower hourly billing rate than an attorney. The searcher specializes in searching, where I would be available to help you consider the results of the search.

Q: What Is the Next Step in Prosecution of the Trademark Application?

As already mentioned above, it takes on the order of three months or so to hear from the US Patent and Trademark Office (USPTO) on the initial review by the Trademark Examining Attorney, and some additional months thereafter for the Trademark to become registered, even if all goes smoothly. The later attorney fees can depend on feedback from the USPTO, and the interests/objectives of the client. Feedback from the USPTO is a major component for later decisions and budgets we would plan to review. Sometimes the subsequent step is straightforward. For more complexity in handling feedback from the USPTO, strategic decisions may involve, for example, abandoning the prosecution of the particular trademark, pursuing more involved interaction with the Trademark Examining Attorney, pursuing an alternative filing on the trademark, or filing for a new trademark.  For more on completing the trademark registration process, see my post on trademark allowance and software specimen.

Q: What Might Be Grounds to Refuse My Trademark Application?

Likelihood of confusion is instructive among possible grounds for refusal of your trademark application.  The USPTO may take the position that your proposed trademark so resembles a trademark already registered in the USPTO, that use of the trademark on your goods or services is likely to cause confusion, mistake, or deception in the marketplace. Perhaps you may better understand such a refusal to register by turning the grounds around, to the perspective of your trademark after its successful registration. Your trademark will serve to prevent others from using confusingly similar trademarks to offer the same goods or services. The trademark protects against others using a trademark that is likely to cause consumer confusion as to the source, sponsorship, or approval of goods or services. Additional discussion of likelihood of confusion and identification of goods or services, is found in my post on trademark prosecution.

Q: What Should I Know About Third Party Solicitations?

The official correspondence from the US Trademark Office will arrive at the correspondence address designated in the filing materials, for example, my law office, whether physically or on my work email account.  Courtesy note: You may receive and disregard solicitations (junk mail) from unassociated third parties, who you may expect to obtain your mailing address from your trademark application ownership records that become publicly available upon the filing of your trademark application.  As further highlighted by the USPTO, you may receive unsolicited communications from companies requesting fees for trademark related services, such as monitoring and document filing.  Although solicitations from these companies frequently display customer-specific information, including USPTO serial number or registration number and owner name, companies who offer these services are not affiliated or associated with the USPTO or any other federal agency.  The USPTO does not provide trademark monitoring or any similar services.

Q: Where Online Can I Find Further Useful Resources on Trademarking?

Trademark Electronic Search System (TESS) http://tess2.uspto.gov/
Trademark Status & Document Retrieval (TSDR) http://tsdr.uspto.gov/
Trademark Applications and Registrations Retrieval (TARR) http://tarr.uspto.gov/
Trademark Acceptable Identification of Goods & Services
http://tess2.uspto.gov/netahtml/tidm.html
International Trademark/Servicemark Classes
http://www.uspto.gov/trademarks/notices/international.jsp
WIPO’s global collections of searchable intellectual property data
http://www.wipo.int/wipogold/en/

Q: Should I Lock in My Domain Name Early?

In this era of cybersquatting and typosquatting, you should consider locking in domain names on your desired trademarks early, at their modest costs. You would prefer to cut out middlepersons who habitually review trademark office public records and squat on domain names, with their intention to seek an advantage and/or premium for getting your intended domain.

Q: Does Clearance of My Trade Name Bode Well for My Trademark?

Keep in mind that approval of a corporate name by the Secretary of State does not equate to trademark clearance. Far from it:  state authorities prohibit identical use of trade names. That state agency’s comparison stops well short of the review for likelihood of consumer confusion considered under trademark law.

Polsky Points

• Your trademark needs to stand out when applied to your goods or services. The more imaginative, the better.
• To pursue federal registration, you need to have plans to use your trademark in the ordinary course of trade.
• To achieve registration, your trademark needs to avoid likelihood of confusion as to the source, sponsorship, or approval of goods or services.

Text Copyright © 2008-2011 Bob Brill

Booth School of Business · Chicago Booth · Linda Darragh · Polsky Center · Polsky Center for Entrepreneurship · PolskyPedia · PolskyPedia.com · University of Chicago

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