In an era where branding has become increasingly important, businesses are investing more time and money into developing and promoting names, logos and catch phrases used to sell their products or services. Businesses want to know that their investment in these names, logos and catch phrases is protected. So, how do they do that?
There are multiple avenues for obtaining various levels of protection, but for businesses that want protection on a nationwide basis, registering their name, logo, catch phrase or a combination of these (each, a “trademark” or “service mark” or, commonly, a “mark”) with the United States Patent and Trademark Office (USPTO) is the way to go. By registering a mark with the USPTO prior to the date another business uses, or registers at the state level or as a domain name, the same or similar mark, the USPTO registrant likely has superior rights to use the mark, including the right to stop an infringing owner from using the same or similar mark and, potentially, the right to collect damages and attorneys’ fees.
Businesses are often not aware that a name, logo or catch phrase must meet certain criteria to be eligible for protection. A mark must be distinctive, meaning it is either fanciful (think “Exxon” or “Kodak”), arbitrary (“Lotus” for software or “Apple” for computers), or suggestive (“Microsoft” or “Android”). Descriptive marks such as “Fast Car” or “Red Bike” can be registered only if the registrant can prove consumers recognize the mark and associate it with its products or services. Generic marks like “E-Mail” or “Smartphone” generally cannot be registered. In addition, the name, logo or catch phrase cannot be confusingly similar to another registered mark.
Registering the mark with the USPTO, coupled with first use, offers the highest level of protection for a business that wants to protect its mark on a nationwide basis. Each business should keep in mind a few things. First, another business that was using a mark prior to registration with the USPTO may, under state law, have the right to continue using the mark even though that business never registered it with the USPTO. Second, before a mark is integrated into a business’s marking scheme, thorough research including a search of the USPTO database for the mark itself as well as variations of the mark should be conducted. Third, trademark registration can be costly and time consuming. Filing costs about $275 for each initial registration plus maintenance fees and can take six to twelve months (or longer if the USPTO or third parties raise objections to the filing) to be approved. Finally, once a mark is registered, it must be continually used and maintained.
Please contact an attorney experienced in federal trademarks for help navigating the trademark process.