Trademark word cloud written on a chalkboard

1. Trademark rights come from use

Although always recommended, trademark rights don’t come from obtaining a federal trademark registration.

Rather, they come from using a trademark in commerce.  So when you begin using a unique trademark to sell your goods or services you gain “common law” trademark rights in the trademark.  You can then use these rights to prevent other businesses in your geographic area from selling similar goods or services using a trademark that is identical or “confusingly similar” to yours.

But beware, if your trademark is confusingly similar to a trademark that was already in use prior to yours in connection with similar goods or services the owner of the other trademark can claim that you are infringing on their rights and may be able to force you to stop using your trademark.

2. You can’t protect generic words as trademarks

When selecting a trademark for your products or services avoid using generic terms (e.g., shoes for Shoes).  This is because you cannot protect a purely generic mark (“TOWELS” as your brand for towels).  The theory here is simple.  If you could protect generic words as trademarks thus securing the exclusive rights to the same other companies wouldn’t be able to use these generic terms to simply describe their goods and services.

Of note, this is not to say that a generic word cannot be a part of your trademark.  Starbucks can still protect STARBUCKS COFFEE.  They just cannot try to register COFFEE alone for use in connection with coffee. Moreover, if they register STARBUCKS COFFEE as a trademark for coffee they will not have exclusive rights to use the term COFFEE despite it appearing in their trademark.

Thus, when selecting a trademark you should aim for a coined (i.e., made up), suggestive, or arbitrary trademark which are protectable in and of themselves.  These may include generic terms so long as some word or other element in the mark is coined, arbitrary, or suggestive.  A trademark is suggestive if consumers would need to use some level of imagination to understand the connection to the good or service (“Sunmaid” for raisins) and is arbitrary if it doesn’t have any logical connection to the good or service (“Amazon” for online retail store services).

So using our examples, you could register SUNMAID by itself or SUNMAID RAISINS in connection with raisins. Either way you would get protection for the term SUNMAID but not for the generic component RAISINS should it appear in the trademark. The same would be true for AMAZON versus AMAZON ONLINE RETAIL STORE SERVICES.

3. Trademark infringement only requires “likely confusion”

Trademark infringement occurs when consumers are “likely” to be confused as to the source of a specific good or service. In short, this means that if you start using a trademark that is “likely” to cause confusion among consumers due to a similarity with an existing trademark (e.g., adopting the trademark NIQUE for shoes when NIKE for shoes is already in use) the owner of the existing trademark may be able to force you to stop using your trademark and even make you pay monetary damages.

Correspondingly, if you select a unique trademark that is coined, arbitrary, or suggestive then you can prevent other businesses from infringing on your rights. As a result, your trademark will be among your most valuable assets.

4. When picking your business name or trademark always have a trademark search performed

When selecting a trademark It is important that you make sure your trademark is clear for use and will not infringe upon another’s use of their trademark.

Your initial instinct may merely be to search the Internet yourself to see if anyone else is using a similar trademark. Some online companies even offer “free” trademark searches. But generally these “free” searches are worth what you pay for them as they often do not bring up results which would directly block the registration of your trademark and lead to allegations of infringement against you (e.g., search for NIQUE (pronounced “nike”) in one of these “free” trademark search engines. It will not bring up NIKE and if you intended on using NIQUE for shoes, well, that shows you the value of a “free” search.  Trust us, “free” searches cost you much more in the end!)

What you should do is hire a professional trademark search company to conduct a trademark search for you. They have more powerful search capabilities, such as searching for near matches and phonetic equivalents, and can search more databases with more relevant search strategies than you by yourself or one of the aforementioned “free” searches. Then you will know whether your trademark is available.

5. Register your trademark!

Although you can claim common law trademark rights, you should register your trademark with the United States Patent and Trademark Office.

A federal trademark registration gives you nationwide rights, provides notice to third parties of your exclusive rights, and it gives you the upper ground in any trademark dispute that might arise later.

As such, for the relatively low cost required to register your trademark it is a business decision that will pay dividends for years.

© 2016 TTC Business Solutions