The Life Cycle of a Trademark
A good trademark is to the success of any company. A trademark sets a company's products apart from competitors and helps customers know what goods or services they can expect. Therefore it is important to consider many factors when creating a trademark in order to avoid trouble later on.
It is often useful to compile a list of possible trademarks and then narrow the list down to. Here are some things to consider.
Appropriateness for foreign markets
If you are planning to offer your products abroad, it is important to determine if your trademark has unpleasant connotations in the target market or if it has an unwanted meaning in the language used in that market.
A trademark is also not allowed to be misleading. It may not misrepresent the nature, characteristics, qualities or geographic origin of the products. Furthermore, it must not mislead or confuse customers as to its origin or imply that the products is associated with or endorsed by another person, organization or company.
There are five categories of trademark strength. The more distinctive it is, the stronger it is.
Generic Terms (Weakest)
A trademark cannot be a generic term that is commonly used to describe the product or a class of products.
Some examples of generic terms:
- Baking Soda
- Shredded Wheat
- Social Network
If a trademark becomes synonymous in popular usage with the underlying product, it can lose its protected status and be ruled generic. In recent years, many companies have worked hard to preserve the distinctiveness of their trademarks to prevent them becoming generic.
Some examples of former trademarks that have become generic:
- Ping Pong
- Super Glue
- TV Dinner
Registered trademarks that have been at risk of becoming generic
On the other hand, some companies have used seemingly generic terms consistently over a period of time to the point that the public equates the term with the particular company's product.
Trademarks were granted for the following seemingly generic terms: (hover over box)
Park 'N Fly
Ordinarily, a trademark cannot simply be a description of the product or service you are providing as it does not specify the source of the good or service being offered. Furthermore, it would inhibit the ability of other companies offering similar goods or services to describe their products. In some cases, it might be possible to register a descriptive mark on the secondary register, which offers less protection than the principal registry.
The only case in which a company can register a descriptive mark on the principal registry is if the term achieved a secondary meaning. A secondary meaning is primarily a matter of customer perception. If a lot of customers recognize a descriptive mark as a specific product being offered by a specific company, then the mark has achieved a secondary meaning. Such perception might be obtained by longevity of the mark or if the product gains widespread recognition as a result of marketing or advertising.
Surnames are also considered descriptive marks and can only receive trademark protection when they have achieved a secondary meaning.
Examples of Descriptive Terms: (hover over box)
International Business Machines (IBM)
Surnames that have taken on a secondary meaning: (hover over box)
These are terms that make a suggestion or inference about the underlying qualities of a product. Suggestive terms must invoke imagination in the customer to perceive the nature of the goods or services being offered.
Examples of Suggestive Terms: (hover over box)
Chicken of the Sea
Arbitrary terms are those for which there is a common meaning, but which have no relation to the goods or services being offered. Consumer perception must be that they are random and out of context with the product.
Examples of Arbitrary Terms: (hover over box)
Coined or Fanciful Terms (Strongest)
These are terms that are created by the company to serve as a trademark and have no other known meaning. Their strength comes from the fact that they have never been associated with any good or service. Infringement is also easier to prove as it is nearly impossible for any other company to show a legitimate reason for using the mark. In some cases like Xerox and Kleenex, however, widespread use of a fanciful term to describe the underlying product can undermine the distinctiveness of the mark.
Examples of Fanciful Terms: (hover over box)
Once you have a list of possible trademarks that you believe are sufficiently strong, the list needs to be further narrowed by screening. There are a number of things that must be considered.
Is the Trademark Already Registered
Clearly, it will not be possible to register a trademark that has already been registered. Therefore, a search should be conducted of federal and state trademark directories as well as the directories for any foreign countries you intend to be active in.
It is important to understand that this trademark search is only a preliminary step. Before applying for the trademark, it is necessary to have a more rigorous examination performed by a research or law firm.
In the Internet age, web presence is very important. For this reason, it is necessary to make sure that domains corresponding to the possible trademarks on your list are either not registered or that the owner is willing to sell them for a price you are willing to pay. If you operate in foreign markets, you will also want to see if the trademark names are available in the ccTLDs (Country Code Top Level Domain) of the markets you operate in (e.g., .uk, .fr, .de, etc.). Additionally, you need to check if Facebook and Twitter handles are available for your possible trademarks.
Clearance is a more in-depth process to determine the viability of potential trademarks and is an important step in determining the likelihood of approval. You should not attempt to perform this, or subsequent stages on your own. Experienced professionals are much better equipped to do this work.
During this process, an exhaustive search is performed for product classes you wish to register your trademark. It is also important to establish whether the candidates are confusingly similar to trademarks already registered in your industry. Some things that will be evaluated are phonetic equivalents, synonyms and homonyms as well as marks using the same prefix, suffix or root word. Additionally, the sound, meaning and appearance of the marks are evaluated to ensure that there are no conflicts. If you intend to use your trademark in foreign countries, it is also important to determine if your mark has a similar foreign translation as an existing trademark.
Logos must also be scrutinized to ensure they are not similar to existing ones.
An additional domain name search may also be conducted during the clearance phase.
At the end of this phase, it will much clearer whether your potential trademarks are available for registration.
Any potential conflicts uncovered during clearance are further examined. In particular, investigation will determine if conflicting trademarks are still in use in the market. If they are in use, then it is important to establish whether they are in a similar industry or geographic area and will create a conflict were you to begin using your trademark or attempt to register it.
Once this investigation is concluded, everything that is required for a lawyer to give an informed opinion about the availability of your proposed trademark.
Once all research has been compiled, your trademark attorney will evaluate the data and issue an opinion as to how much risk there is in proceeding with the registration and whether that risk is reasonable. In this opinion, your attorney will present specific the risks and obstacles your trademark may face. Based upon this opinion, you must decide whether you wish to proceed with the registration.
Once you decide to move forward with your registration, your attorney will gather all the necessary documentation, prepare the application and submit it to the Patent and Trademark Office (PTO). If you are already using your mark, the filing will be use based. If you are registering a mark you wish to use in the future, the filing will be intent to use based. In such cases, if your application is approved, you must begin using the mark and submit a Statement of Use within three years.
The PTO will conduct many of the same steps as those performed by your lawyer to determine if the mark is in conflict with an existing trademark or is confusingly similar to one. If the PTO finds problems witht the application, an Office Action ensues. This is a process where your lawyer is provided with the PTO's objections to your mark and gives him an opportunity to address the concerns and/or submit additional documentation to back your claim.
If your mark is approved, it is then published for review. During a thirty day period, any other party can object to your trademark if they believe that it infringes upon their own trademarks or would otherwise cause their business damage. At this time, the two parties may attempt to negotiate an amicable settlement on the use of the mark or may go before the Trademark Trial and Appeal Board (TTAB) which then rules on the admissibility of the trademark.
Having your trademark approved is simply the first step in branding your products and services. Your trademark is a valuable asset; therefore it is vital to constantly be vigilant against others who may seek to infringe on your trademark or dilute it. One of the easier ways to do this is to regularly search in the PTO gazette and industry periodicals for announcements of trademarks that may infringe upon yours. Also, it is important to look within your industry for other actors who may attempt to introduce products or services that might confuse consumers. There are many third party watch services experienced in looking for these things that companies can choose to use.
If you find competitor trademarks you believe to be infringements upon your own marks, you may approach the company directly and try to reach a solution. If this fails, you may seek legal action to enforce your trademark rights. If the possible infringement is for a trademark that is in the approval process, you may file an objection with the PTO and, if necessary have your objection heard before the TTAB.
Like many things, a trademark registration does not last forever. In order to retain the rights to your trademark, you must continually use it in commerce. If you allow the trademark to become dormant, it may eventually be possible for somebody else to register and use it. In the United States, if a trademark is not used for six years, it may be registered by somebody else. Additionally, it is necessary to periodically file for renewal as well as submit an affidavit that the mark remains in use. In most countries, including the United States, the renewal period is every ten years.
Additionally, it is important that you maintain the registration of your domain name(s). If you allow a domain registration to lapse, it is free to be registered by somebody else. If this happens, it can be very difficult or expensive to regain control of the domain.
Your trademark is a valuable asset and there are a number of avenues you may pursue to further increase its value. You may wish to offer franchisees use of your tradmark in return for fees or royalties. You might also consider merchandising agreements that allow others use your mark on their products. This not only brings you revenue from the merchandising agreement but additional publicity amongst consumers.