A trademark generally protects a word, phrase, symbol and/or design that distinguishes the source of the goods -- what we think of as brand name and brand recognition. A patent generally protects an invention, including the functionality or design, or in other words, “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. Copyrights, meanwhile, generally protect artistic works such as books, photographs, arts, movies and music.

Under U.S. law, a “common law trademark” is generally established when someone uses a company name, logo or slogan in commerce, even if it is not registered. So, why pay to register a trademark when a common law trademark may already exist? Common law rights ordinarily are limited to the geographic area where the mark is used as opposed to the nationwide protection customarily obtained when a mark is registered with the USPTO. So, unless registered, the use of a mark can be geographically limited, which hampers the ability to expand the brand. On the other hand, a person using a mark in a limited geographic area could be boxed in by someone else who offensively registers a similar mark. In addition, registration of a trademark can give the person holding the registered trademark a leg up in court as to the validity of the mark and the date of usage in later trademark infringement litigation, if it comes to that. There are also favorable remedies available to registered trademark owners in the event of litigation. Finally, once a trademark is accepted by the USPTO, it will be maintained in the USPTO database, which can discourage others from using the mark in the future. Future companies should be on notice that the mark is already spoken for, which should in turn help avoid at least some disputes.

The United State Patent and Trademark Office will not necessarily approve every name for a trademark. The USPTO generally describes names as “generic,” “descriptive,” “suggestive,” “arbitrary,” or “fanciful.” A trademark application is more likely to be registered by the USPTO the less “generic” or more “fanciful” it is.

Generic names are rarely given protection. For example, a company that makes screwdrivers and tries to trademark the name “The Screwdriver Company” is unlikely to be successful. Merely descriptive names are also unlikely to receive registrations from the USPTO. For instance, “The Metal Screwdriver Company” is not likely to pass muster because it merely describes a screwdriver as being made of metal.

Ordinarily, descriptive marks are entitled to trademark protection, but only if they have gained what has been termed “secondary meaning.” In other words, the name has become so famous that despite the generic nature, the public associates the product with a specific company. One example is International Business Machines or IBM. Fledgling companies generally are not well known enough to have attained a secondary meaning. Generic names generally do not attain secondary meaning, so are unlikely to be registered by the USPTO.

The chances of approval normally improve with suggestive marks, which often hint at the quality or another aspect of the company. For example, “Herculean Screwdriver Company” may be more likely to be registered by the USPTO than “Strong Screwdriver,” but conveys a similar meaning. However, the line between a suggestive mark and a descriptive one is difficult to draw. Microsoft, which makes software for microcomputers, and Citibank, which provides financial services, are some well-known examples of suggestive marks. Brand owners often like these names because it gives the consumer a good idea of what the company does without the need for additional (and often expensive) education or advertising to disseminate the name for the particular product or service.

Next on the list are arbitrary marks. These are usually existing words used in a way unrelated to their normal everyday meanings. Hence, Chocolate Screwdrivers may work. The textbook example of the arbitrary mark is Apple Computers - not to be confused with Apple Records.

Finally, fanciful marks are ordinarily the easiest marks to be approved. A fanciful mark may be a made up word or a very rarely used word that has nothing to do with describing the products. “Glotz” for a screwdriver company may work. Some examples of fanciful marks are Yahoo!, Google, Exxon and Spotify.

Other common reasons the USPTO may reject names can include the following:

1. it is too similar to another name already registered.
2. it is a surname.
3. it is geographically descriptive of where you are doing business.

Trademarks are normally used to register a name, logo or slogan related to the sale of goods.

Service marks are often used to register a name, logo or slogan related to the sale of services.

Conducting a search of your mark before starting the registration process may help avoid obvious duplications of pre-existing marks and the expenditure of nonrefundable applications fees.

Newer companies may more easily make name changes while they are getting off the ground than years later and after substantial investment in a brand and associated goodwill.

Running searches with the USPTO does not guarantee superior rights to a particular mark. There could be someone already using a similar mark, but who did not register it with the USPTO. In that case, a registration could be subject to challenge by the owner of the earlier-used mark based on of common law trademark rights.

Much like how the availability of a corporate name in a given state does not necessarily provide superior trademark rights to use the name in commerce, the availability of the domain name is not an indication either. A company could have a trademark name on a product or service, but not have acquired the domain name.

The availability of the domain name should be one part of a comprehensive search, which Amercian Trademark offers, to help evaluate the strength of a brand name or slogan and the likelihood of a trademark being approved.Using a domain name as part of a brand that sells goods or services may establish common law trademark rights. A “common law” trademark can be established when a name, logo or slogan is used in commerce, even if it is not registered. Common law rights, however, are limited to the geographic area where the mark is actually used as opposed to the nationwide protection typically established by registration of a mark with the USPTO.

The geographic limitations of an unregistered mark can make it difficult to expand a business. On the other hand, a person using a mark in a limited geographic area could be boxed in by someone else who offensively registers a similar mark. In addition, registration of a trademark customarily gives the person holding the registered trademark a leg up in court as to the validity of the mark and the date of usage in later trademark infringement litigation, if it comes to that. There are also favorable remedies available to registered trademark owners in the event of litigation. Finally, once a trademark is accepted by the USPTO, it should be maintained in the USPTO database, which can discourage others from using the mark in the future. Future companies should be on notice that the mark is already spoken for, which should in turn help avoid at least some disputes.

General benefits to registering a mark:

1. Nationwide protection
2. Presumed right to the exclusive use of the mark nationwide
3. Presumed validity of the mark in a lawsuit
4. Additional remedies in court
5. May increase the value of the company
6. You can record the mark with the U.S. Customs and Border Protection, which may help stop importation of infringing or counterfeit goods into the U.S.
7. The right to use the ® symbol

A trademark registration for a company name may also protect the company’s web address when it encompasses the company name followed by “.com.” The USPTO says the .com or other gTLD does not identify the source of goods and services and so it generally does not consider the .com part of a company’s name. An online business that commonly refer to itself by the name of the website may want to only register the domain name.

Even without registering the domain name as a separate mark, a registered trademark can help prevent cybersquatting and or the use of confusingly similar domain names. In the United States, the Anti-Cyber Squatting Consumer Protection Act and the Uniform Domain Name Dispute Resolution Process may provide additional rights and remedies to holders of registered trademarks.

If investing heavily in a marketing campaign with a slogan, a company might consider registering that slogan in connection with the goods or services they offer well. Like all trademarks, a slogan you wish to register should be inherently distinctive and creative or have developed a secondary meaning. In other words, “really good pizza” probably can’t be trademarked unless that saying has become so famous that most consumers associate it with a certain pizza brand.

The United States Patent and Trademark Office (USPTO) assesses a fee of at least $350 per class, per application. This is charged regardless of whether the applicant files on their own or receives assistance from another party. This fee is collected by Swyft Legal Amercian Trademark after a basic direct-hit search has been performed on the applicant’s mark, before filing then remitted to the USPTO once the application is signed and filed.

After an application is filed, the USPTO states that they will begin reviewing it in about 8 months. Their review takes about a month. If there are no issues, the USPTO will publish the mark in the Official Gazette to see if anyone in the public challenges the mark. If there are no challenges within 30 days, the mark will register approximately three months later.

If the USPTO has any issues with the application, they may issue a letter, which is referred to as an “Office Action.” At that point, there are two options: respond to the USPTO or abandon the application. There is typically a 3 month deadline to respond to the Office Action, and failure to address the concerns of the USPTO will result in the abandonment of your registration attempt. You should consider obtaining counsel to address an Office Action if you've received one. You may request assistance in such matters from the attorneys of Swyft Legal through our website.

If the USPTO continues to challenge the application, there is an appeal process with the Trademark Trial and Appeal Board (commonly referred to as the TTAB). Challenges by a third party to trademarks are also reviewed by TTAB. TTAB proceedings are very similar to a trial in court, and have complicated procedural rules that even non-lawyers are expected to follow. If you find yourself involved in a TTAB proceeding, you should seek assistance from an attorney.

A mark is often (but not always) a group of words with one or more of them describing the product (e.g., tires) or it may be merely descriptive (e.g., great). While it may be appropriate to register the mark as a whole, the USPTO may question an attempt to claim some of the individual product or descriptive terms. Thus, some companies decide to disclaim those words without giving up on registering the mark as a whole or the USPTO may ask an applicant to do so after the fact.

The disclaimer does not remove the unregistrable part of a mark or affect its appearance. A disclaimer appears on the USPTO database that lets the world know the company is not making an exclusive claim to that particular part of the mark. Failure to disclaim part of a mark may be cause for rejection. Often times (but not always), the USPTO can issue an Action Letter seeking to disclaim the unregistrable parts of a mark, which may delay the application. At this point, there are generally two options: agree with the USPTO or decide to fight the request to disclaim. Because it may have significant legal ramifications on the protections associated with the mark, consider consulting with an attorney after receiving an Action Letter with a request to disclaim part of a mark.

The USPTO has published the following examples to illustrate when a disclaimer is likely required:

1. Merely Descriptive Words: Disclaiming “Creamy” from “Famous Mark Creamy Yogurt.”
2. Generic Words: Disclaiming “Yogurt” from “Famous Mark Creamy Yogurt.”
3. Geographic Terms: Disclaiming “Southwest” from “Famous Mark Southwest Guacamole”
4. Informational Words: Disclaiming designations such as size of the product or the year of founding which is usually applicable to registering logos.
5. May increase the value of the company
6. Well-known Symbols: Disclaiming the “$” for a financial services company.
7. Misspellings from “telescoped words”: Disclaiming “Super” and “Rinse” from “Superinse Cleaner.” Another example is disclaiming “quick” from Jay’s Quik Print.
8. Compressed compound wording: Disclaim “Cool Pack.com” from the brand CoolPack.com because CoolPack is a compressed compound term and .com provides no indication of the source of the goods or services.
9. Foreign wording: If the translation of the foreign word is a generic or descriptive term, the USPTO says you disclaim it. They example they use is disclaiming “Rouge” from “Gala Rouge” for wine because Rouge just means “red” which is descriptive of red wine.
10. Multiple words disclaimer: Some words just go together so the USPTO says they need to be disclaimed together instead of separately. The example they give is disclaiming “Pizza Parlor” from “Pete’s Pizza Parlor.”

It is possible to amend an application, but the process and the associated fees generally depend on the timing of the changes. Changes before the trademark has been published in the Official Gazette can be made by logging into your Amercian Trademark account and requesting that a change be made. Additional fees and filing fees to the USPTO may apply.

Changes once the trademark has been published in the Official Gazette generally require a Post-Publication Amendment, which you may request through Trademark Engine.

Depending on the scope of the amendment, an applicant may need to file a new application instead. Changing the mark entirely, for example, would require a new application. Broadening the scope of a description of goods/services or adding additional classes may require additional fees and would also likely require a new application. Clerical errors, on the other hand, are generally easy to fix and typically won’t affect the applicant’s place in line or require a new application.

A common basis for rejection is that the mark’s name is too similar to a name already registered with the USPTO. It can also be rejected if the name is too generic or descriptive. The mark may also be rejected because it is a surname, it is geographically descriptive of the location of the business, it is a foreign term that translates to a generic or descriptive English term, it uses an individual’s name or likeness, or is the title of a single book or movie.

Yes, like any other business asset, a trademark can be sold, licensed or assigned. Validity requirements generally still apply, so someone usually needs to continue to use the mark in commerce and it is helpful to register assignments with the USPTO. If you enter into such an agreement, we can help with a transfer of the trademark with the PTO. Sometimes, individuals register the mark before a company is officially set up. Then, once the company is formed, the mark needs to be transferred into the company.