Tips for Trademark Registration in United States
Registered trademarks have some extra privileges and protection than unregistered trademarks. Logo and marks of your brand should not be similar looking with that of someone else.
What is a Trademark?
A trademark can be any special mark, sign or distinctive element which identifies the source of goods or services. Trademark protects the inventions and products of a company from any infringements by the copycats.
For example, New Aspirin by Bayer and Disprin by Reckitt Benckiser are two trademarked products of the respective companies. Similarly, Nike or Reebok are the registered trademark names of shoe selling businesses.
Trademarks are intended to protect brand exclusivity and saving the time, money and energy spent in presentation of a product or service to the public and as deterrent to the copycats and cheaters. Trademarked products inherently push the company owners for delivering quality services and products. Trademarks also helps consumers for making quick purchasing decisions.
US Supreme Court deems that trademarks cannot be equated with patents or copyrights because trademarks are not inventions or a genius creative work. [RD]
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Registrable and Non-Registrable Trademarks in USA
USPTO will refuse to register descriptive terms which describe its direct meaning or inherent characteristic.
For example, you cannot register ‘Hot’ for tea, ‘cheesy’ for pizza. [RD]
USPTO will also reject generic trademarks; for example, ‘Mobile Shop’ for selling smartphones, ‘Marketer’ for a business involved in advertising. Generic words cannot have exclusive rights because anyone can use a generic name.
You cannot use the name, illustrative image, or signature of other persons. USPTO will only allow it when you provide proof of consent of that person. For example, if you want to use portrait of former president Obama or Trump in your trademark, you must provide their consent.
Similarly, in the US, you cannot trademark your personal name if it is just a surname, or its combination with a generic word. You are also unable to register it if a similar distinctive and well-known name is already trademarked such as Ford® for automobiles. However, if the already registered trademarked name is dealing in some specific commerce classes (types of goods, services) then you may apply to register it in some other classes.
USPTO recommends strongly distinctive and unique trademarks. Strong trademarks include fanciful words such as DOZRO, arbitrary trademarks such as using ‘cupcake’ for selling bicycles and connotatively suggestive trademarks.
Trademarks Must be Continuously and Genuinely Used to Retain Exclusive Rights
The US company, Apple Inc. had a famous registered trademark for the slogan or tagline of ‘Think Different’ since 1997.
However, in its decision in June 2022, the European Union's Court of Justice held that the Apple company cannot exclusively think different – others can also think differently. The court said that Apple Inc. could not prove that the the slogan was being genuinely used.
This case was lingering from 2016 when Swatch used the same slogan. Swatch lawyers provided reason that no doubt it was the registered tagline of Apple Inc. but the company was not using the slogan on its products anymore.
Interestingly, on their website, Apple Inc. warns that its tagline of ‘Think Different’ should not be imitated. [RD]
The decision clearly signifies the importance of genuinely using the trademarks to enjoy their protection from any infringement. [RD]
Sale and Transfer of Trademark Rights in USA
The owner of a trademark can sell or transfer the trademark along with its earned goodwill (reputation) to another person or company – also called trademark assignment. To relieve from any future burden of responsibility, the transfer should be registered with USPTO. [RD]
In 2019, an interesting sale closed related to trademark assignment when Adam Neumann, the CEO of WeWork, sold his own registered trademark ‘We’ to his own company ‘The We Company’ (rebranded from WeWork) for around $6 million – the amount was returned after public outrage. [RD]
Trademarking Tips from the Wise
Following are additional tips related to trademark registration.
If already a registered trademark makes part of a product name, then it is not necessary to register complete name of the product as trademark. For example, ‘BK’ is already a registered trademark of Burger King, therefore the company has not registered its products ‘BK Chicken Fries’ and ‘BK Royal Crispy Chicken Sandwich’ as trademarks. [RD]
If you are not sole owner of a business, then you must clearly mention other persons in the application as joint owners. USPTO will reject your application if you mention yourself as sole owner in application but in reality, other persons also own the business.
Getting trademark approval of your business name should not be equated with registering for tax with federal government. You should register for tax purposes separately with other relevant authority in the US or any other country.
Trademarks are not copyrights or patents. For example, US and EU have different laws for copyrights and patents from those governing trademarks. Therefore, use appropriate for your requirement – for example for original works of authorship (music, art, visuals) you should use services of United States Copyright Office instead of USPTO.
To keep secret the unlaunched products, do not include wordmark in trademark registration application. Register only figurative mark (no verbal elements) and restrain launching product unless trademark is approved. This strategy is being done by many global companies for new products. [RD]
Conclusive Remarks
As concluding marks for this article, please follow the branding steps in following priority.
Choose an ideal brand name that is futuristic. It is better than rebranding later.
After finalizing business name, buy the same domain, preferably in .com extension. If required domain name is not available, then choose some other brand name.
You can register trademark for that chosen brand name. In USA you can also trademark your website domain name.
However, registering trademark can be expensive and time consuming. In most countries including USA, UK, Canada, and EU, exclusive trademark rights can be protected even without officially registering it – and with proper and effective use of the name in business transactions. Therefore, you can launch your startup business without registering the trademark and then try to get ‘acquired distinctiveness’ in short span of time through effective marketing, so that your business name can be protected from possible infringement.
Explore more articles about business BRANDING and brand naming ideas.
