Can be initials or numbers (usually at least two), a word, a slogan (usually 2-4 words, anymore is too cumbersome), a logo, a symbol, a graphic design, fancy fonts with or without colors, a sound, a scent, or just a color, or any combination of anything previously mentioned that distinguishes a good or service in the market place.

 

A trademark can be one of your most valuable assets for customer recognition and good will towards your product or service.

 

As opposed to patent or copyright protection a trademark can last forever as long as the product or service is in interstate commerce.

 

Think highly novel, unique, coined, or fanciful.  A trademark should be a word with absolutely no dictionary meaning; it’s totally made up and is not associated with anything.  Why do you want a totally new word?  So that you can actually register it as a trademark, in other words you are reserving that word for yourself for your particular good or service and want to know that no one else is already using that word as a trademark.  Ideally, you create a new word and give the new word its own meaning through your trademark.  

Examples would be: CHEX, HYDROX, KODAK, POLAROID, etc.  

Here are some ideas to stimulate creativity in creating trademarks:

Intentionally misspell known words.

Use words from ancient (but not current foreign) languages.

Have the word easy to say, hear, remember, and not prone to misspelling when people hear it.

Be cautious on using words from currently spoken foreign languages, for inappropriate meanings, and never if you are going to sell your product or service in that foreign country.

Rearrange syllables in current words.

 

Anything that is descriptive, generic, related to a geographic location, or a surname.  The trouble with these words is that they are already in common use, you cannot get a trademark on your name, where would that leave everyone else that had your same name if you were to monopolize it?  Examples of poor trademarks are: Bank of Texas (geographic), Smith Electronics (surname), and Baking Soda (descriptive).

 

Note that there is a hybrid type of a trademark, called a semi-descriptive mark, which infers the use of the product or service but does not directly describe it.  Examples would be: HAMBURGER HELPER, SHAKE AND BAKE, COPPERTONE, LIQUID PAPER, etc.  These types of marks may be acceptable in the United States but will most likely be unacceptable in foreign countries that do not accept descriptive marks at all, thus it is best to go with a totally unique and new name for the strongest mark.

 

There are three types of rights, common law, state, and federal. 

You acquire common law rights by simply putting your trademark in commerce by selling products or services with the mark in place.  There is no registration or search for a prior mark that is like or similar.  However, your rights are limited as your mark protection only extends to the geographic area you sell in and only to the specific product or service you sell.  Common law rights also carry the risk that you are infringing on another’s mark and may have to abandon your mark after putting effort into promoting it, as you never know if your mark is exclusively yours.

State trademark rights only are for a particular state, and carry the same risks that common law rights have, mainly that you would either be limited to a particular state or would be preempted by a federal registration. 

Federal rights are acquired by registration with the Patent and Trademark Office and give you trademark rights in all of the United States, being the strongest exclusive rights you can obtain for a trademark, also you can prevent importation of knock-offs with the assistance of the U.S. Customs Service, allows you to use your federal registration as a basis for foreign registration, (many foreign countries do not recognize common law rights), and helps minimize disputes over mark ownership, mark validity, and the exclusive right to use.

There are 2 types of federal trademark registration, one is called the “principal”, the other is called the “supplemental”.  The principal register is for the strongest most distinctive marks and gives full registration rights, the supplemental register is for weaker marks being not distinctive enough that prevents others from registering a like mark, but supplemental marks will not have much strength in court. After 5 years the mark owner can apply to be transferred to the principal register from the supplemental register by proving that the supplemental mark has acquired a secondary meaning.

It is highly recommended to obtain a federal registration on the principal register to help ensure that your trademark stays yours and maximizes your legal rights to protect your trademark.

As with patents, trademarks are only valid on a country-by-country basis, a United States Federal Trademark registration is only good for the United States.  Trademark protection in other countries must be obtained in those countries.  A point to keep in mind is that foreign countries typically have more stringent law for a trademark not being able to be descriptive at all, compared to the United States that may allow a semi-descriptive trademark, such as HAMBURGER HELPER, SHAKE AND BAKE, etc.

It is prudent to file internationally at the same time or within 6 months under the Paris convention of your United States filing for U.S. file date priority and to reserve your mark everywhere you want to use it.  The risk you run, if you say, file in a foreign country years after your U.S. filing, is that your U.S. mark may not be available in the desired foreign country and you would have to change your mark after having used it in your U.S. markets or that someone in a foreign country may have registered your “Famous” mark in the foreign country holding the mark “hostage” and wants to sell it to you. 

 

Also remember that most foreign countries only recognize filed trademarks and have no common law rights.  Remember to check “connotation” issues which are where your trademark can have an undesired meaning in a foreign country, and to consider the more stringent requirements for a foreign trademark that restrict descriptive and semi-descriptive type marks.   

 

There are a number of ways to file foreign trademarks, either on an individual country by country basis or through the Madrid Protocol which is a blanket filing that covers the European Union countries, Japan, Korea, China, the U.S. and a number of other countries, however, not Canada or Mexico.  The Madrid Protocol matures into a trademark registration, requiring that a first filed trademark application be filed in your country of origin first, also the Madrid Protocol can be filed in the U.S. Trademark Office.  There is also a Madrid Agreement that is a blanket filing covering fewer countries. 

 

To determine which foreign trademark program is best for you would depend upon which countries and how many countries total you want trademarks in.

 

This constitutes the notice of the trademark to the public, ™ is used give notice of common law rights or when there is a registration pending and before the actual federal registration.  ® is used after registration of the federal mark either on the principal or supplemental register.

 

The primary protection is to prevent purchaser confusion of your mark in relation to other marks that are similar to yours, normally your mark is exclusive for a particular class of goods or services and you have the right to protect yourself from others using your customer goodwill and trademark to divert business and potentially weaken your trademark or cause a loss of control over what your trademark is associated with.  Also trademark rights transcend a specific class of goods if the mark is famous, in other words the Mercedes circle symbol would be considered a famous mark and another could not use this logo even in an area that did not involve cars, say food products.  In this case there is no risk of purchaser confusion, however, Mercedes will still have the right to control what their name is associated with.

 

Create the Trademark and drawings

Prescreen search – make revisions

 

Full search including similar and abandoned marks

 

Legal opinion on whether to file application

 

Prepare and file trademark application

 

Trademark Office reviews the application and completes a search – about 6 months from filing, at this point the Trademark Office sends a 1st office action to the applicant either refusing the trademark for registration, or allowing the registration based upon some conditions, or allowing the registration with no conditions.

 

A 1st response is prepared by the applicant if required for the Trademark Office to the 1st office action, wherein the Trademark Office prepares a 2nd and final office action to the 1st response. 

 

A 2nd response is prepared by the applicant to the Trademark Office 2nd and final Office action to hopefully put the trademark application in condition for allowance.  If this results in an impasse with the Trademark Office than an optional appeal can be made to the Trademark Trials and Appeals Board (TTAB) to argue for allowance of the trademark registration.  Subsequent to this the case can be taken to the Federal Court system.

 

Opposition period – the applicant’s Trademark Office Examiner approved trademark is published in the Official Gazette for the public to object to your proposed federal trademark registration, usually by someone with common law rights over a 30 day period.  To fight the opposition requires litigation against the opposer.  This is a rare event as only 3% of the trademark publications are objected to.  If you are objected to it may be easier to abandon the current trademark application and just file a new trademark application. 

 

Proof of use – the trademark must be used in interstate commerce, such as documented use on products being sold, sales invoices, shipping records, product samples, etc that is submitted to the Trademark Office for approval.

 

Certificate of federal trademark registration issued

 

Trademark owner must properly maintain the trademark to control the use of the trademark from becoming “generic”, that is always associate the trademark with the as federally registered goods or services (trademark must be used as an adjective not as a noun) and give proper public notice of trademark rights with the  ®, and preferably have an ownership statement to further clarify your trademark rights by stating; The trademark “your trademark” is a federally registered trademark of “your company name, contact information, etc”.  Remember federal trademark rights only exist for the federally registered trademark and the identified goods or services, if you change either the trademark or the associated goods or services, then your rights degrade to “common law” from the superior federal trademark registration rights.      

 

Maintenance of the trademark- a proof of use between the 5th and 6th year and ongoing 10-year renewals with proof of use.

 

Commercial exploitation of the trademark

 

In addition, after 5 years from your trademark principal registration if your trademark is not challenged, you can file a declaration to make your mark incontestable, which makes it more difficult for a challenger to invalidate of your mark.

 

See budget portion of website for trademark costs.