How to Trademark: Information on Registering a Trademark

US Trademark Law and the Trademarking Process

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Trademark Dos and Don'ts

Remember that trademark rights are established by use. In order to maintain your claim over a mark, you have to be sure that you are using the mark properly. This page covers a lot of useful advice to keep in mind when it comes to the use of your trademark. While trademark registration is an important part of the process, there's more that you need to do to keep your trademark protection in good condition. Don't forget to take a look at our Trademark FAQ for more information.

 

Don't Let Your Mark Become Generic!

We're all familiar with what happens when a term that was originally a trademark becomes adapted into everyday language. You'll often hear people talking about going out to play a game of "frisbee" or using the internet to "google" something. While this may be how language naturally evolves, it can be a problem for the trademark owners. If a trademark is considered to have become generic, then you can no longer claim exclusive rights to its use — it has simply become part of the language!  

Did you know that both kerosene, zipper, and escalator were originally trademarked names? They have long since become generic terms, and anyone can now describe any slide fastener as being a zipper, regardless of whether or not it was built by G.F Goodrich.

To avoid your trademark becoming generic, it is important that you use your trademark properly. Failure to use your trademark in the correct manner can actually provide the basis for competitors to claim that the mark is generic and therefore not protected. 

 

Use Your Trademark Properly

You will never see Google talk about "googlingsomething. This is because the trademark Google is not a verb — it is not something you do. Rather, it is an adjective: it describes a certain search engine. So, you can do a search on the Google search engine, but you cannot google something.

This is important. It might seem like a company would want their trademark to become so widespread that it comes to stand in for a term in the natural language. The problem is that if "google" became a generic term for performing an internet search, then Google could not prevent any competitors from referring to their internet search tools as "googling". Companies who fear that their mark is in danger of becoming generic will often employ advertising campaigns to remind the public of the proper use of their mark, and will often contact businesses or websites which are using the mark incorrectly as a generic term.

Always remember the following rules for properly using a trademark:

 

Use Your Trademark Consistently

The entire purpose of a trademark is to identify your brand to consumers. You want your trademark to be as recognizable as possible, and that means ensuring a consistent appearance and format of your mark. You want people to instantly be able to recognize your mark, ideally even from a distance. In order for your mark to be so distinguishing, it's important that you use it consistently.

You want to be consistent both on how the mark appears, and also where it appears.

Where the Mark Appears 

The location of the mark is important so that customers can easily see it. But it is also part of the overall branding of the product itself. Having a distinctive mark which always appears in the same spot — whether that's in one of the corners of the box, front and center, or in some particular place on the product itself — incorporates the mark into the overall look of te product or packaging itself, and allows for customers to identify your brand immediately. You never want someone to have to look for your trademark.

How the Mark Appears

Consistency in appearance is just as important. Even if you did not register your trademark with any specific stylization, you want to make sure that you always represent your mark using the same text. Again, this is to ensure that your mark is immediately recognizable to consumers, more than it is to meet the requirements of avoiding "likelihood of confusion" for trademark infringement purposes. 

 

Be Diligent Before Choosing a Mark to Ensure it Is Not Already in Use by Someone Else

Accidental trademark infringement is still infringement, and the best case scenario, if you get caught, is that you are told to stop using your chosen mark. Trademark infringement can also lead to fines and damages, and so it is obviously best avoided. 

Performing a trademark search is an essential first step in selecting a mark. We recommend that you do a preliminary search yourself, and then take advantage of a professional USPTO trademark search service to rule out everything you may have missed. You can also search the internet and yellow pages for unregistered trademarks.

Remember that the key issue is "likelihood of confusion". If you see any marks which are similar enough to the one you wish to use that a reasonable person might confuse one for the other, then you can consider that mark taken. 

For information on trademark searching fees, see our Trademark Costs page or contact us for an estimate.

 

Choosing the Strongest Trademark Possible

The stronger a trademark is, the broader protections are afforded to the holder. Weaker trademarks can only be used to cover the use of the mark in specific contexts, whereas a very strong mark will provide exclusive rights to the owner. Roughly speaking, there is a scale of trademark strength ranging from coined terms to generic marks.

  1. Coined Terms. Generally the strongest trademarks, coined terms are words of phrases that are completely made up and without any meaning outside of the context of their use as a trademark. Famous examples would be XeroxExxon, and Häagen-Dazs.
  2. Arbitrary Terms are almost as good as coined ones. Arbitrary marks make use of real words, but in ways that are not in any obvious ways associated with the goods or services the mark is used with. Maybe the most famous example of this is Apple computers.
  3. Suggestive Terms offer less broad protection since they are somehow associated with the trademarked product to begin with. Suggestive marks do become stronger with use. An example would be Kellog's Pop-Tarts® breakfast pastries.
  4. Descriptive Terms are an obvious choice for trademarks but are actually quite weak. Descriptive terms in some way describe the product itself, and even if they are registerable the protection they afford is usually not very strong. 
  5. Generic Terms, as discussed above, offer no protections at all and cannot be registered.

Always avoid generic terms. Coined or arbitrary terms are generally the best. Remember that the purpose of your trademark is to make your product or service distinguishable to consumers. Apple is such a strong and memorable trademark for computers precisely because it's a term that is in no other way associated with that field. Descriptive terms, on the other hand, area almost never memorable since they don't stand out and fail to set your goods apart from competitors. 

 

Marks NOT To Use

There are certain marks which are not available for use as trademarks either because they are prohibited by law or because they convey no rights. 

  

Some Notes on Language

If your trademark makes use of any foreign words, you want to make sure that they transfer well into English. For example, you may not want to call your winter clothing brand Phoque (French for seal). Similarly, if your product is meant for export you should check to see how it would come across in foreign languages.

Further, you want to consider regional variations in English. For example, most English speakers outside of the U.S pronounce "z" as zed, and so E-Z Wash would not come across the way you might have wanted. The last thing you want is to accidentally offend potential customers!

 

Always Acknowledge the Trademark Rights of Others 

Not only is this the polite thing to do, it's also how to avoid getting sued for trademark infringement. Whenever you use someone else's trademark, be sure to acknowledge their rights. For example, Frisbee® is a registered trademark of Wham-O.

 

USPTO Trademark Registration

Registering your trademark with the United States Patent and Trademark Office provides several benefits. Principal amongst these is that registration is considered to serve as nationwide notice of your claim to the trademark. Registration allows you to use the '®' symbol. to sue in federal courts, and to seek damages from infringers. Further, after 5 years of registration, a trademark may become eligible for "incontestable" status. 

See our Trademark FAQ for more information on registering with the USPTO.