A trademark or "brand" includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods.
It is well known that the "branding" of a product can play an important role in its success, or failure, in the market place. A business engaged in branding seeks to create the impression with customers that its branded product or service has certain qualities or characteristics that make it special or unique. Brands represent the sum of all the valuable qualities of a product to the consumer, such as quality, convenience, customer service, exclusivity, status, etc. . . . . A brand which is widely known in the marketplace acquires valuable brand recognition that can translate into increased sales and profits.
Where two products in the market resemble each other, but one of the products has a recognized brand, and the other does not, people may often select the more expensive recognized brand product on the basis of familiarity and comfort with the quality of the brand, the reputation of the brand owner, and/or the desire to be perceived as being associated with a well known, popular, and prestigious brand.
Because of this businesses often invest heavily in "branding" in order to effectively distinguish their product in the market, and convince customers to not only buy their product over a competing product, but to also pay a higher price for the added value associated with the brand. Such branding by a business can be expensive, with careful brand selection and management, supported by good marketing and advertising campaigns.
The law extends protection to "branding" primarily through trademark law. Essentially trademark law prohibits competitors from using brands on their products that are so similar to the brand of another product that there will be a likelihood of confusion in the mind of a customer as to the source, affiliation, or endorsement of the competitor’s product.
The degree of protection that trademark law will provide to a brand depends upon the distinctiveness of the brand. The more descriptive the brand is of the underlying product the less protection it will receive. This is because all competitors have a right to be able to communicate fairly and accurately to customers the nature and quality of goods they are selling. So a business that makes and sells steel bolts won’t be able to claim exclusive rights in the market place to use the term "steel bolts" as this is just a description of the product. A competitor is allowed to fairly use the term "steel bolts" when describing and selling its competing steel bolts to customers. However, if a business is the first to adopt and use the brand "warrior" for its steel bolts, then since "warrior" is not descriptive of the product, it would be eligible for protection under the law as a trademark. This means that a competitor could not later enter the market and start trying to sell its steel bolts under the same "warrior" brand, or anything else likely to cause confusion as to source, affiliation, or endorsement (such as perhaps "soldier" steel bolts).
If a business does enter the market using a brand that is confusingly similar to an already existing brand, then that is an act of trademark infringement. Businesses who have taken steps to build and protect their brands have powerful legal remedies available to them against trademark infringers. Such a business may be able to get a court order requiring the competitor to stop using the confusingly similar brand. This may requiring the competitor to recall and destroy any infringing merchandise, and perhaps also pay for corrective advertising. Needless to say this can be extremely expensive. The business may also be able to receive an award of money from the infringer for damages it suffered on account on the trademark infringement.
In the U.S. trademark rights in a brand are acquired by being the first to use the brand as a trademark on certain types of goods. In other parts of the world trademark rights are established not through first use but through first registration of the trademark.
A business can seek to register its brand with the United States government if the product is sold in interstate commerce. A business can also seek to register its brand in any individual state where the trademark is used. However, registration alone does not create any trademark rights in a brand. As mentioned in the U.S. trademark rights only arise from use by the business of the brand in commerce. Indeed, you won’t be able to register a trademark in the U.S. until you submit proof that it is being used (although you can file an intent-to-use application beforehand).
Registration of a U.S. trademark is usually worthwhile as it does convey some valuable benefits. Registration with the federal government for a brand used in interstate commerce starts at several hundred dollars and can cost thousands of dollars, depending upon how many classes of goods the brand is used on, whether or not an attorney handles the application (highly recommended), and what happens during examination of the mark.
Trademark protection in a brand generally lasts as long as the brand is being used as a trademark by the business.
Careful thought should be given to the selection of the brand name used with a new product. It will be an important tool in the successful marketing and sale of the product to customers. If the brand chosen is too descriptive, then it may not function to effectively distinguish your product in the marketplace from the competition, and may not be entitled to much if any trademark protection under the law. The more fanciful and arbitrary the brand, the stronger the protection it will receive under the law.
Before investing in the adoption and use of any brand it is highly recommended to first perform a trademark clearance search on your contemplated brand and consult with a qualified attorney. While this cost of such due diligence may at first seem significant, it pales in comparison to the costs that may be incurred in starting to use a brand only to discover that someone else is claiming that your brand is an infringement of their rights and has commenced legal action to force you to stop.
Frequently Asked Questions
Question: How do I establish rights in my brand name or design?
Answer: Make sure that you use it in advertising and marketing, place it on your products and in your literature, and use it as much as you can in connection with your product or service. You also need to make sure that nobody else uses the brand name on similar products or services in a way that is likely to cause confusion with customers as to who the source of the product is.
Question: Do I need to register my brand name or design in order to establish rights in it?
Answer: No, but there are definite advantages to doing so. One of the advantages to registration is that it helps to provide notice to others who may be thinking of using something confusingly similar to your brand name or logo. Thus, registration can prevent others from unknowingly adopting and using your brand name. Federal registration also entitles the registrant to use the symbol ® in connection with the brand name or logo, is evidence of the right to exclusively use the brand name or logo in connection with certain types of goods or services, gives a right to sue in federal court, and the right to file the registration with the U.S. Customs Service to help prevent the importation of infringing goods.
Question: Do I need to do a trademark search before registering my brand name or logo?
Answer: No, but you should do a trademark search before you start using your brand name or logo to make sure that you will not be infringing somebody else’s rights.
Question: Do I need an attorney to do a trademark search?
Answer: No. In fact before hiring an attorney you should probably do your own quick search first of the internet and the registered trademarks at the United States Patent & Trademark Office. In many cases people find out quickly that what they had planned on using as a brand name or logo is already being used by somebody else on the same kinds of goods or services.
If you don’t find anything however, the next best step is to retain an attorney to have a professional search done and give you an opinion on the availability of your brand name or logo for the goods or services that you will be selling.
Question: Why should I get an attorney to do a trademark clearance search?
Answer: A professional clearance search of a contemplated trademark is not a legal requirement, but is a prudent practice for any business. Obtaining a professional clearance search can help defend against charges of willful, or even criminal, trademark infringement that might be brought against the business if someone later claims that its use of the brand name or logo is a violation of their rights. A finding of willful trademark infringement can support an award of attorneys fees which can be many thounsands of dollars.
Question: How much does it cost to get a trademark clearance search?
Answer: It depends upon the type of mark, scope of the search, and results of the search. Accordingly, there can be a wide range of cost, but it is not uncommon for a professional U.S. clearance search to cost at least a thousand dollars (and often more). This may seem like a big expense to a new or small business but it is minimal compared to the expenses that a business will incur if it adopts a mark and is then later accused of trademark infringement.
Question: If my trademark is available how much will it cost to register?
Answer: It depends upon the type of application for registration, number of classes of goods and services the trademark is registered in, and also what happens during the examination of the application for registration. On the low end for registration in a single class of goods and services for a word mark based on actual use (as opposed to intended use), with no issues during the examination, the expense is typically in the hundreds of dollars. It can be substantially higher for registration in more classes or if there are issues during the application process.
Question: How long does it take to get the mark federally registered?
Answer: The average time to receive a first response from the Patent & Trademark Office is approximately three to six months. Depending upon what the response to the application is, it can then take anywhere from three to fourteen more months to actually have the mark registered. It is important to note that it is the use of the mark by you in commerce that creates trademark rights, not the act of registration. Indeed, before the mark will be registered evidence of actual use in commerce will need to be submitted by you.
Question: Can I use the ® symbol while my application for registration is pending?
Answer: No. Your mark must actually be registered before you can begin using the ® symbol in connection with it. Until you have achieved registration you can use the "TM" symbol in connection with your mark to give notice that you are claiming trademark rights to the name or design.
Question: Can anybody get a federal registration of their brand name or design?
Answer: No. In order to qualify for federal registration the mark must be used in interstate commerce. So if it is only used locally within a single state (e.g. a local business selling and advertising only to local customers) then it will not be eligible for federal trademark registration. However, you may still obtain a state registration for the mark.
Question: What is state registration of a trademark?
Answer: State governments, usually through the office of the secretary of state, also register trademarks that are used in the state.
Question: Should I also register my trademark with the state?
Answer: It is not required, but is usually a good idea because state law can provide some powerful remedies against the infringement of trademarks registered with the state.
Question: How much does it cost to register a trademark with the state?
Answer: Each state sets its own fees and requirements for registration. So you should discuss this with a qualified attorney.
Question: Can I get a trademark registration on the name of my business?
Answer: Maybe, if it is used as a trademark and not just a business name. You should do a trademark availability search before choosing a name for your business however to avoid choosing a name that could violate somebody else’s rights.