Protecting Your Company’s Trademarks

Posted by Attorney David J. Espin in Business Management / Comments

Your company’s name, logo, and, more broadly, its “brand,” often comprise some of its most important and valuable assets.  Strong brand recognition often takes years to build, and helps to engender customer loyalty and distinguish your business from its competitors.  Thus, it’s important for business owners to understand what types of names and symbols can be trademarked, and how to effectively protect your trademark once it’s established.  Below is an overview of U.S. trademark law, along with answers to some common questions than many business owners have.   

What is a trademark? A trademark is a name, catch phrase, or symbol that identifies and distinguishes one company’s goods or services from those of other businesses.

What factors determine whether a trademark is legally protectable? Trademarks are classified into five categories of increasing distinctiveness: generic, descriptive, suggestive, arbitrary, and fanciful.  The level of protection they are entitled to depends of how distinctive they are.  Typically, generic marks (e.g. “Ice Cream Shop” for an ice cream shop) and descriptive marks (“Creamy” ice cream shop) are not entitled to trademark protection.

Suggestive marks (“Smooth N’ Tasty” ice cream shop) suggest, but do not describe, the qualities of the goods or service, and are stronger that generic or descriptive marks, but not as strong as arbitrary or fanciful marks.

Arbitrary marks (“Arnold’s” ice cream shop) are marks that have a definitive known meaning, but that meaning is not associated with the protected goods or services.  Fanciful marks (“FreezEees” ice cream shop) are words that are invented solely for use as a trademark, and do not have another meaning.  Arbitrary and suggestive marks offer the strongest trademark protection.

Do I need to register my company’s trademark? A trademark gains “common law” protection when it is used in connection with the sale or advertisements of goods or services.  Generally, this entitles the trademark holder to protection from local infringers ˗ however, this protection would not extend to other geographic areas where customers are not likely to be confused by the similar marks.  This common law protection can also be abandoned after several years of non-use. 

What are the advantages of registering a trademark? In addition to this common law protection, trademark owners can also register their trademarks with the U.S. Patent and Trademark Office (“USPTO”). Here are some advantages of doing so:

• Nationwide trademark protection in connection with the goods/service listed in the registration, and the presumption of national ownership regardless of where a competitor is located ˗ this serves to put all potential infringers on notice of the trademark as well.  

• The automatic right to sue for infringement in federal court, and to request protection from Customs and Border Patrol for counterfeit goods manufactured and shipped from foreign countries.

• The right to use the federal registration symbol “®”.

• You can use your U.S. approved registration as a basis to register the mark in other countries.

What is the USPTO filing process? Applicants can file online on the USPTO website by filling out the application and paying a filing fee.  Applications must state the “basis” for the filing ˗ ordinarily either the current use of the mark in commerce or the intent to use the mark in the future.  The application will eventually be assigned to a USPTO attorney to review in order to determine whether the mark is permitted to be registered under federal law.  The USPTO will then deny the registration, grant the registration, or request addition information from the applicant.

What factors determine whether the USPTO will approve a trademark application? Trademark applications are most commonly denied because the applicant’s mark is likely to be confused with a different mark that is already registered.  A likelihood of confusion exists where (a) the marks look similar, and (b) the goods or services of the mark holders are similar enough that customers may be confused as to their source.