Establishing Trademark Rights

By definition, the U.S. Patent and Trademark Office (USPTO) describes a trademark as any word, name, symbol, device, or any combination, that is used to identify and distinguish your goods or services from those of others. Most often these are the name of your business and/or your logo.


In other words, your trademark is your brand. With the sheer volume of businesses and individuals competing for attention in the marketplace today, having a strong brand that others recognize and trust is incredibly valuable.


Trademarks and service marks are interchangeable. A Trademark identifies the source of physical goods while a service mark identifies the source of services.


In the U.S., trademark rights arise automatically at the moment you start using the trademark to sell goods or services (known as “common law” rights). This means you are able to use the ä symbol even if your mark is not registered. However, your rights are limited to the geographic area where the mark is being used.


Federal Registration

There are several significant advantages to registering your trademark or service mark with the USPTO, including:

•  The legal presumption that you have exclusive rights to use the mark nationwide;
•  Public notice of your claim of ownership of the mark and listing in the USPTO online database;
•  The right to use the federal registration symbol “R”;
•  The ability to use your U.S. registration as the basis for obtaining registration in foreign countries; and
•  The ability to record the trademark registration with U.S. Customs and Border Protection to help prevent the importation of infringing foreign goods.

It is possible to obtain a state-specific trademark registration, but a federal registration is preferable for the vast majority of businesses for the reasons outlined above.

Another major benefit for new or early-stage startup businesses is the ability to file an “intent-to-use” application. This allows you to protect your rights for up to 3.5 years while fundraising or developing your product or service. Once you begin using the mark in commerce, your rights will extend back to the date your original application was filed.


Pre-Application Clearance Search

The USPTO will not register a mark that they consider “confusingly similar” to a previously registered mark. Therefore, it is important to conduct a search of the USPTO database prior to filing an application to determine the likelihood that it will be registrable.

It is also a good idea to search the internet for possible conflicts with marks that are being used but may not be federally registered. Having a professional search done will yield the most extensive results and provide the greatest peace of mind that your mark will not infringe on the rights of a 3rd party. 


Selecting A Strong Mark

It is important to note that some marks are stronger (easier to register and protect) than others. Also, not every mark is able to be federally registered.

Generally, marks fall into 1 of 4 categories: fanciful or arbitrary, suggestive, descriptive, or generic. Which category your mark falls into will have a significant impact on both your ability to register the mark and to enforce your rights in the mark.


1.  Fanciful and Arbitrary
•  Fanciful marks are invented words with no dictionary or other known meaning, such as “Pepsi” or “Xerox” and are considered to be the strongest type of mark.
•  Arbitrary marks are existing words or images, but which have nothing to do with the business using the word or image. For example, “Apple” for computers or “Shell” for gas stations. These are also considered to be a very strong type of mark.


2.  Suggestive
•  Suggestive marks can be real or invented words or images, but the mark suggests something about the products or services offered by the company.
•  Examples of suggestive marks are “Microsoft” which suggests software or “Greyhound” suggesting speed.
•  Despite being less strong than arbitrary or fanciful marks, suggestive marks are more common due to the inherent marketing advantages.
•  Although very similar to descriptive marks, suggestive marks typically require at least some amount of imagination to connect the mark with the product or service.


3.  Descriptive
•  Descriptive marks are words or designs that actually describe the goods or services, such as “Cold and Creamy” for a frozen yogurt company or “World’s Best Trampolines” for a trampoline manufacturer.
•  If the USPTO determines that a mark is “merely descriptive,” it will be denied registration unless the applicant can show that the mark has acquired distinctiveness – usually by showing extensive use in commerce over a 5-year period or longer.


4.  Generic
•  Generic marks are common, everyday names for goods or services, such as “Bicycle” for a bike shop or “Clocks” for timepieces. Everyone has a right to use these words so it is impossible to obtain trademark rights in a generic mark.
•  Generic marks can never be federally registered.


Enforcing Trademark Rights

The USPTO only registers trademarks, it is your responsibility to enforce your exclusive rights to use your mark. Monitoring your marks cannot be overlooked because a failure to stop others from infringing your rights could ultimately lead to losing those rights.