(Table of contents) What Makes a Good Trademark? Not all trademarks or business names are created equal. Some are stronger and more defensible than others, and the type of mark you choose can be an important factor in determining the amount of protection your mark will be accorded.
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Fanciful Marks In general, the strongest marks--those accorded the most protection by the law--are made of totally unique or created "words" which have no direct equivalent in English or any other language. These are completely fanciful marks such as Kodak for film and cameras, Frisbee for flying discs, Tylenol for acetaminophen, etc. Although it normally takes massive advertising and marketing campaigns to establish these trademarks (i.e., to get people to associate the mark with the goods), once established they are granted the highest level of protection by the courts, so that anyone else using that mark or anything like that mark could be held liable for infringement, even if used on entirely different types of goods or services.
(Table of contents) Suggestive Marks Suggestive trademarks are somewhat weaker than unique or fanciful marks. Suggestive marks are made up of established English words (or words in other languages) which suggest qualities or characteristics of the product or service.
For example: Burger King, Imperial margarine, Nike running shoes, and literally hundreds of thousands of others. Suggestive marks are not as strong as fanciful or unique marks, and so they get less protection from the courts. That is, companies would normally only be permitted exclusive use of that mark for a particular type of goods or services. For example, it would be unlikely that there would be a conflict between Nike for missiles and Nike for running shoes, or between Imperial for margarine and Imperial as a brand of automobile made by the Chrysler Corporation.
Many people feel that suggestive marks are a good choice for small- to medium -sized companies which may not have the massive advertising budgets needed to establish the stronger fanciful marks.
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Descriptive Marks Weakest of all are descriptive marks--those which merely describe the product such as "green apples" for green apples, or praise it in some way, such as "good tea", "fresh bread", "tasty juice" etc. Descriptive marks receive little or no protection from the law, on the grounds that nobody may claim a monopoly on the basic words needed to identify or characterize a particular product. In addition, marks which the U.S. Patent and Trademark holds to be "merely descriptive" do not qualify for federal registration.
In practice, of course, the distinctions between these different types of trademarks are not so simple: fanciful or unique marks grade into suggestive marks and suggestive marks grade into descriptive marks--and sometimes it takes the courts to figure out which is which. However, it is important to keep these basic types of marks and their relative strengths in mind, both in developing your trademark and in evaluating the results of your trademark search.
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How Do I Protect My Trademark? There are three basic ways to protect a trademark or business name used as a trademark in the United States:
Common Law Usage. You can establish "common law" rights by simply using the mark.
State Registration. You can register your mark with the state or states where you are doing business.
Federal Registration. You can register your trademark at the federal level with the U.S. Patent and Trademark Office.
It is also possible to register your mark in foreign countries, but that is beyond the scope of this discussion.
Common Law Protection. Common law or "usage" rights are the simplest way to protect your trademark, but as you might expect, they also afford you the least protection. In the United States, trademark rights are conferred by usage, so all you have to do to establish your rights in a mark is to begin using it to identify your products or services. You don't have to ask permission, you don't have to pay any fees, you don't have to register it with anybody--simply attach it to your products and services and you have the right to defend it in court, should you have to. Of course, it is possible that someone else may already be using the same mark to identify their own products and services--which gives them certain rights which they can also defend in court--perhaps against you. This is why a good trademark search should always include these "common law" or unregistered marks, if you really want to uncover all potential areas of conflict.
State Registration. You can obtain somewhat greater protection by registering your mark with the state or states in which you are doing business. The value of state registration varies from state to state: in some states it only serves to put people on notice that you claim rights in the mark, in others, it can provide you with significant legal advantages which can make it much easier to defend your mark in court.
California is one of the states with more protective trademark laws, so it would be well worth your while to obtain state registration, particularly if your mark does not qualify for the stronger federal registration. If you are planning to obtain federal registration, it is not necessary to register your mark with the state.
In California, state trademark registration costs $120.00 per class, and application forms may be requested from the Secretary of State, Trademark Unit, 923 12th St. Suite 301, Sacramento, CA 95814; or call them at 916-653-4984 or 213-897-3062.
Federal Registration. By far the best way to protect your mark is to register it with the U.S. Patent and Trademark Office --otherwise known as federal registration. Federal registration, in particular, serves as presumed notice of first use, and can make your mark virtually incontestable after five years. In addition, companies who knowingly infringe on federally registered marks may be liable for up to treble damages.
Federal registration can be a rather complicated and expensive process, but it is possible to do it yourself, and if you do succeed in registering it, you will have some decided advantages over those who simply rely on state registration or common-law rights.
By the way, only federally-registered marks may use the ®. If your mark is not registered, or registered only at the State level, you may use the TM (or SM for services) symbol to indicate that you claim some rights to the mark, but it does not necessarily mean the courts will agree with you.
In order to qualify for federal registration your mark:
- Must be distinctive enough to qualify as a trademark. Merely descriptive marks (including marks which are primarily surnames or geographic names) do not qualify for federal registration.
- Must not conflict with any existing mark.
- Must be in use in interstate commerce, that is, used on products or services which cross state borders.
- Must not be deceptive, immoral or scandalous.
If your mark is not currently in use, but you have a "bona fide" intention of using it in interstate commerce within a limited period of time, you may file an "intent to use" application which can hold your mark for from six months to three years, provided you meet all the filing and extension requirements.
Federal Registration currently costs $245.00 for each class of goods and services you register under.
Federal Registration forms are included in the "Basic Facts About Trademarks" pamphlet included with all our trademark searches. If you want more assistance, we suggest you purchase "Trademark: How to Name a Business & Product", published by Nolo Press. This book is an excellent guide for anyone planning to do their own federal registration, and features a complete chapter on federal registration requirements, complete federal registration forms, and step-by-step instructions on how to fill them out. This book is available as part of the Descriptive with Book Trademark Package, and may also be found in libraries and purchased from many local bookstores.
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Why Do a Trademark Search?The purpose of a trademark search is to help you identify any existing marks or business names which may conflict with the mark you want to use. There are a number of reasons why it is important to identify potential conflicts before you begin to use your mark whether you register it or not.
To Avoid Infringing An Existing Trademark. If your mark is held to "infringe" a federally-registered trademark, you may be liable for as much as treble damages to the legitimate owner of the mark. You may also be held liable for lesser damages, if you are found guilty of infringing state-registered or common-law marks.
To Avoid Confusing Your Own Customers. If you adopt a mark which is confusingly similar to one already in use, your own customers may not be able to tell whose products are whose, and some other business may be getting sales which should have been yours.
To Avoid Infringing Local Trademarks As You Expand Your Markets. A trademark search will help you identify potential conflicts in all regions of the U.S., so that you can avoid adopting a mark which may already be in use in another part of the country. If you do adopt a mark which is already in use in another market area, the owner of that mark may be able to prevent you from expanding into their market using that mark in the future. Worse yet, under some conditions the original owner of the mark may be able to expand into your market and prevent you from using your own mark.
To Help You Evaluate the Strength of Your Mark. Your trademark search may show that your mark is being used by so many businesses that it would be of little value as a trademark or brand name anyway, and you may want to come up with something more distinctive to help set you apart from all the others.
Whatever the case, it almost always makes sense to run at least some sort of a trademark search on any new business or product name you want to adopt.
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How Can Seek Help? Seek offers a variety of basic, inexpensive trademark services designed to help you evaluate and protect your product or business name, including:
Full Analytical Trademark Search. Although our Descriptive Trademark Search suffices in most cases, in some instances our Full Analytical Search may be desirable when your mark is made up of unique or fanciful words (Tylenol, Kleenex). This top-of-the line trademark search is offered in cooperation with Trademark Research Corp. It is a very broad search covering all significant syllables and elements of a mark in federal and state registrations and common-law uses. Search results include complete records for all marks retrieved, plus logo images for federal registrations. Strongly advised for unique or fanciful marks not composed of regular words and recommended for anyone interested in the most comprehensive search possible, regardless of the type of mark. For more information, or to order our Full Analytical Search, please call us at SEEK, 1-800-722-SEEK.
Descriptive Trademark Search. Complete federal, state and common-law trademark search. This is a trademark search that is designed to identify exact or closely-related matches with your mark. This should be quite sufficient for many suggestive trademarks or business names made up of commonly-used words. However, if you have a unique or fanciful mark (one not made up of actual words--Ovaltine, for example), or you would simply like the most thorough search possible, you would be well-advised to order our Full Analytical Search on your mark. The Full Analytical Search will pick up potential conflicts on all significant syllables and other word elements. Please note that some records in the Descriptive Trademark Search may be presented in abbreviated format. Complete records may be purchased for an additional charge, at the customer's discretion.
Internet Domain Name Search The Internet Domain Name Search is InterNIC's WhoIS Database, and covers all registration in the Top Level Domains .COM, .GOV, .NET, .EDU, and .ORG. The search is designed to pick up any Domain Names that are exact matches or closely similar to your mark. Full details, including contact name, address, telephone, Internet Service Provider, and, of course, Domain Name have been included for each record. This search is limited to Domain Names only, and does not include companies that may be doing business on the Internet under the Domain Name of an Internet service provider or other host. You may want to try searching your mark on one of the Internet Search Engines such as AltaVista (http://altavista.digital.com) or Excite (http://www.excite.com) to try and locate companies that do not show up in the Domain Name search.
The Federal "Eliminator" An inexpensive, "eliminator" search on federal registrations only. Allows you to check up to five candidate trademarks in the federal registrations to help you identify those that may be worth a more complete search. Good for screening out "killer" trademarks and other obvious conflicts before investing in a complete trademark search. Not a substitute for a full trademark search.
Logo Search. Includes a search of all federally-registered
logos to identify logos with similar shapes or other features. Search results will show actual logo
images. Written marks which go with logo must be searched separately. Only available for federal registrations.
All our trademark searches, with the exception of the "Federal Eliminator", feature extensive coverage of
federal, state and common-law sources, including all active federal Registrations and Intent to Use Applications
generally current up through the past two weeks, state registrations for all 50 states and Puerto Rico, plus a search
of over 30 million business names and 2 million product names in business and trade directories, electronic
"yellow pages" and other business databases to help you identify unregistered product and business names and other
common-law uses.
Finally, please remember
that our staff are not attorneys. We cannot help you analyze
your search to determine which marks may actually represent serious
conflicts. If you should need assistance in interpreting your search
results, we recommend that you take advantage one of our Trademark
Packages which include a copy of "Trademark: How to Name a Business &
Product" or consult an attorney.
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