Everywhere you go, whether online or walking down the street, there are symbols, sounds, and words that trigger your senses. Our brains immediately make certain associations – the apple with a bite taken out of it; the golden arches on the corner; the three stripes on the side of the tracksuit. In a split-second, we know exactly what they are.

Trademarks have been around since the Roman Empire, when blacksmiths would stamp a symbol on their swords identifying themselves and their work. U.S. trademark law has come a long way since the days of the Roman Empire, but the same basic principle applies –

Easily identify your company in order to gain public recognition and a loyal following.

The brands discussed above – Apple, McDonald’s, and Adidas – have all established themselves as powerhouses internationally. But they started small – with the registration of the marks that we can all immediately recognize today. This was one of the most important steps they took in launching their brands and we suggest any business, big or small, do the same.

What Kinds of Trademarks are There?

There are many different types of marks. Generally, when we think of a trademark, we think of company names or logos; but did you know that sounds, smells, colors, and even product packaging can also be trademarked?

We all know the orange color of a Reese’s peanut butter cup package – well, that color is trademarked. As is the brown color in the UPS logo. The NBC chimes and the McDonald’s “I’m Lovin’ It” jingle are sounds that have been trademarked. How do you get a color, scent, or sound registered? Easy. It’s the same as for a name or a logo – show that it identifies the source of the product. There is no mistaking the Doughboy’s laugh, and we all know that the company associated with it is Pillsbury. Acquire that public recognition and you can have your sounds, scents, and colors trademarked, too.

Also, the product packaging itself can be registered and protected. Coca-Cola registered the shape of its glass bottles. Christian Louboutin registered its famous red soles.

If your product packaging is unique and indicates that your business is the source, you would be doing yourself a disservice not registering it.

Once you know what you want to register, you need to decide what type of registration to apply for. You can choose from any (or all) of the following:

Word Mark

A word mark protects the word on its own without images or design features and consists of plain text. It is also known as a standard character mark. There is no claim to a font, style, size, or color. It can be a brand name, tagline, or phrase. This provides the widest protection for your mark.

Design Mark

If there is an associated design element to your mark, you want to choose this type to protect the design itself. This is also known as a stylized mark. This would cover a stylized font or graphical element. This is the one you would choose for logos.

Color vs. Black and White

Another choice is whether to register the design in color or in black and white. Registering the mark in black and white without claim to any color would give you the widest protection. Claiming a color or combination of colors limits your protection to only the use of that set of colors. An example of this is the Rubik’s Cube. While we know that the Rubik’s Cube itself contains a specific set of colors used in a specific pattern, the registration for the Rubik’s Cube is for a black and white design mark. This prevents others from using the design with a different set of colors and would allow Rubik’s to expand to other colors in the future without needing to file an additional registration.

You can (and should) register your mark in multiple ways.

Google, for example, has a word mark, multiple design marks covering various stylizations, and design marks covering both black and white use and exact color patterns. This approach offers the best protection as it ensures that each mark is covered and is exclusive to your business. It also allows you the greatest ability to enforce your marks against infringement.

If you don’t have the ability to file multiple registrations, and you have to choose just one, always choose the one that gives you the widest protection and allows you to expand in the future.

What Makes a Strong Trademark?

The U.S. Patent and Trademark Office (“USPTO”) is the one who determines your trademark fate. When you apply for a trademark, you do so with the USPTO, and they do an evaluation and make the final determination whether your mark qualifies for registration. In doing this evaluation, they consider where you mark lies on the spectrum of strength.

To give you the best chance of qualifying, your mark needs to be strong.

But what does that mean?

According to the USPTO, this means that the more inherently distinctive your mark is, the stronger it is. To be inherently distinctive, your mark should be unique and creative using fanciful, arbitrary, or suggestive words, phrases, designs, etc.

Fanciful marks are completely invented. The only meaning they have is in relation to the brand. Examples include Verizon and Clorox.

Arbitrary marks are actual words or images with an established meaning, but that meaning has nothing to do with the products or services which use the marks. Examples include Dove for chocolates and Shell for petroleum.

Suggestive marks indicate a quality related to your products or services, which gives the consumer an idea of your company’s purpose. Examples include TurboTax and Coppertone.

While ideally your mark will fit into one of the above categories, the most important factor is a mark that stands out from the crowd and is highly distinguishable from other goods in the marketplace.

The weakest categories of trademarks are descriptive or generic marks, and generally these do not qualify for trademark protection, but even a descriptive mark can be protected if the mark is distinguishable enough.

Descriptive marks are those which merely describe a mark or service. Examples could include San Francisco Dry Cleaners, “Clean and Cold” (for water), and Bank of America. All of them merely describe what they are – a dry cleaner in San Francisco, a company that sells clean, cold water, and a bank located in America.

Normally, the USPTO would deny an application for such a mark. However, they still have a chance of becoming protectable.

All they need to do is acquire secondary meaning.

This occurs when consumers recognize that mark as being associated with a specific source. For example, Bank of America achieved its registration after marketing itself and gaining public recognition. Now, it is a protectable mark registered with the USPTO.

Another example is Kentucky Fried Chicken – a descriptive mark since it is merely describing the type of chicken it sells and the state it comes from. However, after gaining popularity and expanding its business, the public came to know that Kentucky Fried Chicken wasn’t merely any old chicken made in Kentucky, but that it was a specific restaurant. Once KFC achieved this secondary meaning, “Kentucky Fried Chicken” made it on the Principal Register with the USPTO and is fully protectable.

Generic marks will never qualify for registration. These are marks that state what the product or service is – hypothetical examples include Paper Towels to sell paper towels, and Computer to sell computers (however, these are protectable if they are used in an arbitrary way – e.g. Computer to sell sneakers).

Trademarks that have been registered can also become generic over time. This happens when the public begins to use that mark as a generic/common name for a product or service. Famous examples of marks that have become generic are Aspirin, Escalator, and Chapstick. These brands are no longer protectable.

Additionally, your trademark can’t conflict with another mark that is already registered. Regardless of whether your mark is strong, if it isn’t unique, you are out of luck.

When Can I Register My Trademark?

There are additional limitations to what can be registered, or, more aptly, WHEN a mark becomes protectable.

Trademarks are protected by the Constitution under the Commerce Clause, which gives the government the power to regulate commerce among the several states. Essentially this means that your trademark only becomes federally protectable when:

You have used the mark on your products or services, AND the product or service is currently being sold or transported within the U.S.

If you have not yet gotten to this point, but you want to reserve the right to use the mark in commerce, you should file a 1b intent-to-use application with the USPTO which essentially reserves your spot in line. When you are ready to use your mark in commerce, you will need to file a 1a use-in-commerce application. The benefit to proceeding this way, is that when your application is approved, it gives you the right to protect your mark as of the date the intent-to-use application was filed as that was the date that the public was put on notice of your ownership of the mark.

Make sure that your application covers the class of goods or services in which your products or services fall.

The last thing you want to do is accidentally file an application for paper products when you sell metal jewelry. There are 45 classes to choose from, so choose carefully.

How Long Does My Registration Last?

To keep your trademark registration active, you must maintain the registration with the USPTO. This means various filings at regular intervals over the life of the registration, including, but not limited to:

Declaration of Use – between years 5-6 after the mark is first registered; a fee must be paid for each class of goods and a specimen must be sent for each class.

Declaration of Incontestability - after 5 years of continuous use, an owner can file for incontestability which makes the mark immune from challenges.

Renewal - between years 9-10, and every 10 years thereafter, the owner must submit another declaration that use is continued and a request to renew the registration.

Section 7 Request – if you stop using the mark on certain goods, you must file a request to delete that good from the registration

If you stop using your trademark for any reason for a three-year period, the USPTO will find that you have abandoned your mark with no intention of using it in the future.

This means that you can no longer claim any rights over that mark, and others can use it without recourse.

Trademarks registrations can last forever, so long as you continue to use the marks in commerce and keep up with the registration maintenance. There is no limit to the amount of time that the trademark will remain valid. This is one of the greatest benefits of trademark registration – it gives businesses the ability to enforce their rights and maintain exclusivity over their valuable asset.

For more information on Trademarks, or if you have any questions with regard to the Trademark Registration Process, feel free to reach out to us.