We’ve been asked this question numerous times so here I will attempt to provide you some basic information regarding trademarks. It’s important to note that I am not providing legal advice. For legal advice, or information about your particular situation, please reach out to a qualified attorney with experience in trademark law.
NOTE: This is not legal advice, and all of the following is a brief summary of open source facts posted on the United States Patent and Trademark Office (USPTO) website, titled: “basic facts about trademarks: what every small business should know now, not later” and from their video posted on Aug 30th, 2013 with the same title. Below you’ll find the links to the pages and sources.
In the following we will be covering these key topics:
- What is a Trademark?
- Benefits of a Trademark.
- How do I register my logo as a Trademark
- Trademark applications can be denied.
- Inherent Strength of a Trademark
- Do your research
- Enforcing your Trademark rights
- To Sum things up
1- First thing first. What is a trademark?
A trademark is “any word, slogan, symbol, design, or combination of these that: 1) identifies the source of your goods and services, and 2) distinguishes them from the goods and services of another party.”
A trademark can also be a sound, color, or smell. Technically speaking there are Trademarks, and there are Servicemarks. A Servicemark is an identifying mark for a source of services, while a Trademark is a identifying source of goods. These two are often used interchangeably, but to avoid confusion we will stick to the term Trademark.
Direct quotes aside, a trademark is something that identifies your business and its goods and services. So while it may commonly be thought of as merely a logo, there is so much more to it. For this post, we will focus almost exclusively on Logos as that’s the source of most of our inquiries.
Trademarks are often commonly confused with Patents and Copyright. Below are their definitions for differentiation:
- A patent – protects inventions
- A copyright – protects original artistic and literary works
A Trademark, along with a Copyright and Patent are all means of protecting intellectual property, but function in significantly different ways. Here is the example given by USPTO:
A vacuum can be patented, the logo upon the vacuum can be trademarked, and the accompanying advertising for the vacuum can be copyrighted.
It’s also important to note that a Domain Name and Business Name are not inherently a Trademark. For instance, a Domain Name is a web address, while a Business Name is a name of a business registered under a state. However, USPTO offers the following example: Amazon.com is not only a Domain name and Business Name, but also a Trademark because it identifies the source of a good.
2- Benefits of a Trademark:
Is there any real value in a trademark? Yes.
Federally Registered trademarks receive the following benefits:
Once again, we at EvenVision are not providing legal advice and so we will leave the following as direct quotes from the USPTO basics video (link found down below).
- Legal presumption that owner of mark
- Legal presumption of exclusive right to use mark
- Puts public on notice of ownership of mark
- Mark listed on USPTO database
- Can record registration with U.S. Customs & Border Protection
- Right to bring legal action concerning mark in federal court
- Use registration as basis for foreign filing
- Able to use federal registration symbol ®
In essence then, by registering your mark with the federal government you’ll be letting the rest of the world know that the mark in question is owned and controlled. Not only that, but it provides you with a position to legally police your logo, brand and identity to make sure that competition doesn’t take up a similar image and eat away at your market.
3- How do I register my logo as a Trademark?
So the benefits seem enticing, but how do you actually register a trademark? Well it’s important to note that there is a two tier system within the United States for registering a trademark: Federal and State. Because there is so much information about registering trademarks available, we will only be covering Federally Registered Trademarks.
That said, a Federal registration gives the registrant rights throughout the entire United States, territories and possession, while a State registration only provides rights within the state. Thus Federal Trademark registration is more desirable.
Note: If you’d like more information regarding State vs Federal Trademark registration you can find it on the International Trademark Association website, or if you want to know more about California Trademark services you can go to the California Secretary of State Business Programs website (link below).
Now, the actual steps of Federal registration are as follows:
- Pick your item that you wish to have trademarked.
- Research/hire help/ensure item can be trademarked (more on this below).
- File for Federal Trademark Registration through the United States Patent and Trademark Office (USPTO).
Note: when you file for a Trademark and pay the accompanying fee to do so (which typically ranges from around $200-$400), you are not guaranteed the trademark. The fee only covers the costs of the USPTO’s team to process the application. But if you do the proper research and have help to do so, you are more likely to have a smooth process and get your logo trademarked.
Now, all of these steps you can actually do by yourself – no attorney required. But, as you may be able to tell, the process can be lengthy and taxing so if you need help here’s what USPTO recommends:
- Licensed Attorney – Help Obtain or conduct a pre-application clearance search, interpret search results, navigate the application process, help you understand the scope of your rights, advise you on the best way to maintain and enforce your rights.
- Free and reduced-price legal services
- USPTO Law School Clinc Program
- SCORE program – SCORE.org
- Patent and Trademark Resource Centers
- Free Information on USPTO.gov
USPTO does provide a word of warning about making use of Third Party Trademark companies. You need to be extra careful about reading the fine print, because many third party companies charge extra upfront for services that they can’t actually provide, and will only provide services in the event of a Trademark application failure for a substantially higher fee.
4- Trademark applications can be denied.
The most basic reason a trademark application maybe denied by the USPTO is based on the principle called “likelihood of confusion.” Defined below:
“likelihood of confusion between the mark in your application and a mark registered from another party.”
Here are some of the things which maybe red flags for the USPTO with regards to likelihood of confusion:
- The Marks are similar – the Marks look alike; sound alike; have similar meanings; create similar commercial impressions.
- Good and Services are related – consumers mistakenly believe the goods and services come from the same source.
There is however, a way that two identical marks can co-exist and that is as long as the goods and services are unrelated.
To avoid a “likelihood of confusion” scenario occurring and a trademark application being denied by the USPTO, they recommend having a mark with inherent strength, and strongly recommend doing the appropriate research; or as they call it, a Trademark Clearance Search.
5- Inherent strength of a Trademark
Not all logos or marks are created equally, this not only has to do with the quality of their design work but also with the selection of name. Some are indeed stronger than others, and for trademark purposes this is an important aspect to note because the strength of a mark determines how easy it is to protect.
USPTO notes these distinct levels of strength, listed from weakest to strongest: These are pulled directly from their video regarding the basics of trademarks:
- Generic – “milk” or “bicycle”
- Descriptive – “creamy” or “ultimate bicycle rack”
- Suggestive – “quick n’ neat” or “glance a day”
- Fanciful – invented words and are therefore inherently distinctive and easy to protect – “Xerox”, “Cisco” or “Microsoft.”
- Arbitrary – actual words, but no associations with the good and services – “Apple” , “Blackberry” or “GAP”.
If you were to try and trademark a word like “milk” and you were a dairy manufacturer it would be significantly harder than to trademark than if you were to try and trademark the same word, “milk” and you were a software producer. But no matter what, a made-up word would be significantly easier trademark no matter which industry you were operating in. It can easily get a little complicated, but common sense and a little use of Google can help weed out poor choices pretty fast.
Along with these ranks for the name trademark USPTO also recommends considering these elements (all of which can also lead to your trademark application being denied):
- Strength of Mark
- Likelihood of confusion
- Geographically descriptive
- Deceptive, disparaging, or offensive
- Misspelling of description/generic wording
- Name or likeness
- Title of a single book or movie
- Ornamental/decorative matter
For more on this specific items, take a look at USPTO’s website or speak with a licensed attorney who can provide legal advice.
6- Do your research
Once again, filing for a trademark does not mean that you are guaranteed a trademark, nor are you able to be refunded your filing fee. Therefore, no matter what size your organization is, it’s important to spend the time in researching whether or not there is already a trademark registered that would prevent your application from being accepted.
USPTO calls this process the Trademark Clearance Search and recommends the following steps:
- Trademark electronic search system (TESS) - done by accessing the USPTO database (which is the same database used once an application is received). It’s important to note that this only contains federally registered trademarks.
- State trademark Databases
- Business Name Databases
- Internet Search – just Google stuff
- Hire a licensed Trademark Attorney – they can help to evaluate and provide legal opinions
Note: there are registered trademarks and unregistered marks. During your process of evaluating whether or not you want to register your mark keep in mind that unregistered marks by business may create serious legal issues and are therefore worth researching and considering.
7- Enforcing your Trademark Rights
You are responsible for policing your trademark. If another organization infringes upon your registered trademark rights, the federal or state organizations that they are registered through will not do anything unless you initiate an action against the organization that is infringing upon your rights. That said, the USPTO will not allow a company to trademark a similar mark or logo, so there is at least some level of automated policing occurring.
If you do not protect your trademark, your trademark may run the risk of becoming generic, or as USPTO describes it: a “hot mark can cool.” Examples: Aspirin, Escalator, Videotape. These were once registered trademarks which became generic because the business which owned the mark never made any attempt to police the mark. Because of this anyone can use the word Escalator and not fear legal action being brought to their front door. On Wikipedia there is a list of generic and genericized trademarks if your curious to find out which other terms have suffered genericization.
You are responsible for taking care of your trademark and enforcing your rights.
To sum things up:
Should I trademark my Logo? Totally. There are some serious benefits if your business or organization plans to exist for a long duration and expand.
But the process can be long, hard and possibly expensive. You have to be smart about what your trying to trademark, and be careful about the help you acquire. Furthermore, trademarking your logo isn’t simply a one shot process, but requires careful diligence overtime to make sure your mark is protected.
While we at EvenVision can help you develop a Logo and brand we personally do not help with the trademark process, and do not make recommendations regarding attorneys to hire for help.
If you’d like more information regarding the trademark process we’d recommend taking a look at USPTO’s website, and watching their extensive collection of helpful process videos.