(1) TRADEMARK
SELECTION
Developing A Mark Which Suits Your Unique Business Needs
Selecting a mark to represent your product or service is one of
the most important steps you will take in creating a successful
business. You will, therefore have many things to consider when
selecting your mark. Your trademark will set your product or
service apart from your competition. It is up to you to decide
how you want your trademark to represent your product or
service.
The following is a list and description of the kinds used in
commerce starting with the strongest and ending with the
weakest:
Fanciful - A fanciful mark is a truly unique word
such as EXXON™. These marks tend to better set your
product or service apart from the competition. Naturally
these marks get the strongest protection against trademark
infringement. A disadvantage to this type of mark, however,
is that it is not indicative of your product or service.
Arbitrary - An arbitrary mark is an existing word
that has little or no connection to your product or service.
Examples include INFINITI™ automobiles and APPLE™
computers. These marks also provide substantial protection
against infringement but will not provide any
information as to what you are selling.
Suggestive - A suggestive mark is a little more
indicative of the product or service but does not directly
describe the product or service. More precisely it indicates
some characteristic of the product or service. HUGGIES™
brand diapers for example is a suggestive mark. These marks
are favorable because they offer substantial protection
against infringement while describing some desirable aspect
or quality of your product.
Descriptive - Selecting a mark to represent your
product or service requires a balancing act between
competing business concerns. On one hand, it is advantageous
to select a mark that is "descriptive" of the
product itself. This type of mark immediately informs the
consumer what he or she is considering buying and what they
can expect from the product. However, as you might expect,
such marks give little protection against competitors who
try to knock-off your products
Most of the marks that people would like to register are
somewhere in-between. They consist of combinations of
descriptive words and words that are unique to the producer
(i.e. "PRINGLES™ Potato Chips"). They may also be
"suggestive" of the product (i.e., "GREASY™
Potato Chips"). The more unique the mark, the greater the
protection.
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(2) TRADEMARK
SEARCH
The Inventor-at-Work TRADEMARK
REGISTRATION KIT includes easy to follow instructions on
conducting your own trademark search using the power of the
Internet.
The Trademark Search is Critical
A critical part of launching a new company or product is the
step of developing a name or trademark. Trademarks allow your
customers to distinguish your products from others, so your
trademark should be distinctive. And since you do not want to be
sued for infringing another company’s trademark, a trademark
search is essential.
Trademark searches should be designed to include
all word orders, spellings, and phonetic equivalents. Minor
differences in spelling or punctuation are not important. The
addition or subtraction of a meaningless prefix or suffix ("EZ"-this
or something-"PRO") also does help you avoid a
trademark suit by a competitor. Since your search must be
sophisticated enough to find marks with subtle spelling
differences, professional searches are highly desirable.
The best time to develop a trademark is when you first start
selling a new product or service. If you wait until you have
used your mark for years, you may find that the mark is not
capable of enforcement, or, even worse, that the mark is owned
by a competitor. It is important to realize that incorporating a
company or filing a fictitious name (dba) DOES NOT GIVE YOU THE
RIGHT TO USE THAT NAME! This point cannot be overstated. Part of
developing a trademark is to search for a mark that is not
currently being used by a competitor. If you use a mark that is
owned by your competition, they will be able to order you to
change your name even though you may have incorporated under
that name or filed a dba for that name. Many businesses have
been forced into bankruptcy because they were unable to afford
to recall all of their products and change all of their
advertising.
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(3) TRADEMARK
REGISTRATION
The Inventor-at-Work TRADEMARK
REGISTRATION KIT is easy to use and allows
you to establish protection for your invention.
(1) Application for Registration
The registration process is initiated by filing an
application with the Patent and Trademark Office. Registration
on the Principal Federal Register provides nation-wide notice of
your ownership of the mark, preventing competitors from later
accruing ownership rights. Registration provides many important
benefits, such as prima facie evidence of your ownership of the
mark and the validity of the mark. Registration also allows the
Registrant to sue in Federal Court to enforce your mark, and
establishes your priority in foreign countries, most of whom
grant rights based on first-to-file.
(2) Trademark Prosecution
Approximately 3-6 months after filing the application, you
will receive an application number and filing date.
Approximately five months after filing, the application will be
examined by an attorney at the PTO and will either be accepted
or rejected. There are multiple grounds for refusal, many of
which can be overcome by argument or amendment. This prosecution
stage may give rise to additional legal fees.
If you filed an "Intent to Use" application, you
also must file proof of your use in commerce within 6 months
following receiving a Notice of Allowance (although some
extensions are available for a fee). The government requires a
$100 filing fee with this filing.
(3) Trademark Maintenance
In order to maintain your Federal Trademark Registration, it
must be renewed every ten (10) years. In addition, (under
Section 8) a one time affidavit of use must be filed after five
years (and within six years) after the original issue date. You
can file to have the mark made "incontestable" after
five (5) years of continuous use in commerce (under section 15).
The section 8 and 15 filing are generally made at the same time
for economy.
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(4) OTHER NOTES
TRADE-DRESS
- Trademark protection is often
available for product packaging, logos, as well as various other
"marks" that most people would not consider capable of
trademark protection, including colors and scents. If your
product has powerful and unique advertising, various aspects of
that marketing may be capable of trademark protection.
FOREIGN
options must always be considered.
It is possible to retain your U.S. priority filing date when
seeking foreign trademark rights. This is critical if you ever
expect to ship product out of the U.S. because most foreign
countries give trademark rights to the FIRST TO FILE rather than
the first to use the mark. If a competitor registers your mark
overseas before you do, HE WILL GET THE RIGHTS TO YOUR MARK!
Consult your attorney. A few minutes worth of legal counsel will
save you thousands of dollars in the long term.
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TRADEMARKS CREATE BRAND NAMES
Consumers are willing to pay a premium for brand name goods
instead of inexpensive "generic" brands because people
like to buy from companies they know and trust. Trademarks are
the legal tools with which companies create these brand names.
What is a Trademark?
Trademarks are words and/or symbols used to tell consumers
about the source of the goods they purchase. Through use in
commerce, these marks eventually create an identity that
distinguishes a company from its competition.
Trademarks have been used for many years. Ancient guilds
pressed a mark into their products (such as pottery). This guild
mark allowed consumers to distinguish high quality guild pottery
from cheap pottery made by non-guild members.
Why Should I Get a Trademark?
Trademarks serve about the same purpose today as they did in
the days of the guilds. By placing your mark on your products,
you allow the consumer to distinguish your goods from shoddy
imitations. While your mark may have little value at first, a
company’s trademark serves as a vessel to capture and retain
the goodwill and customer satisfaction generated over the years.
Satisfied customers will begin to seek out your products – and
your trademark allows them to distinguish your product from the
competition. The mark also serves as a shield to ward off the
cheap knock-off products that will invariably appear and attempt
to steal your customers.
When Should I Get a Trademark?
The best time to develop a trademark is when you first start
selling a new product or service. If you wait until you have
used your mark for years, you may find that the mark is not
capable of enforcement, or, even worse, that the mark is owned
by a competitor.
It is important to realize that incorporating a company or
filing a fictitious name (dba) DOES NOT GIVE YOU THE RIGHT TO
USE THAT NAME! Part of developing a trademark is to search for a
mark that is not currently being used by a competitor. If you
use a mark that is owned by your competition, they will be able
to order you to change your name even though you may have
incorporated under that name or filed a dba for that name. Many
businesses have been forced into bankruptcy because they were
unable to afford to recall all of their products and change all
of their advertising after receiving a cease and desist letter
from their competition.
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