Trademarks

Trademarks are everywhere. Whether you're going out for a cup of coffee or writing a simple email, it's impossible to ignore the familiar logos, slogans, words and colors that make you immediately think of your favorite search engine or coffeehouse chain. They may seem simple, but these phrases and logos represent valuable intellectual property (IP) that can make or break a company's brand image.

This article explores how companies can protect this powerful form of IP: with trademarks.

What is a Trademark?

A trademark can be a symbol, design, word or phrase that identifies a company or its goods and services.

Unlike other forms of IP like patents or trade secrets, trademarks aren't related to technical information or designs of products or services. Instead, the value of trademarks comes from the positive association that customers make between the mark and the company it represents.

What Can be Trademarked?

Trademarks are probably the most diverse group of protected IP. Examples of protected trademarks include:

  • Brand names: 800.com, Microsoft, Google
  • Product names: Camry, Big Mac, PlayStation
  • Product shapes: the Coca-Cola bottle, the iPhone design
  • Logos: the NBC peacock logo, the Fox News spotlight emblem
  • Slogans: "Just do it" (Nike), "I'm lovin' it" (McDonald's)
  • Stylized Words: the "Coca-Cola" and "Yahoo!" fonts
  • Colors: "Tiffany blue" (Pantone No. 1837), "John Deere green and yellow" (Pantone Nos. 364C and 109C)
  • Sounds: the Nokia ringtone, the Yahoo! yodel
  • Fictional characters: Ronald McDonald, the Geico gecko
  • Symbols: the Nike swoosh, the Chevrolet cross emblem
  • Any combination of the above: the Starbucks emblem (brand name and symbol), the Tiffany gift box (product shape and color)

Can Anything be Trademarked?

Compared to other forms of IP protection, the USPTO is relatively flexible when it comes to registering trademarks. Even seemingly generic words and attributes can be trademarked — think of Nike's "Just do it" slogan or the protected "UPS brown" color. However, the USPTO lists some very specific situations where a trademark can be refused. A trademark won't be granted if:

  • The trademark is merely descriptive. For example, "World's Best Chicken" or "Original NYC Pizza" could not qualify as trademarks by themselves.
  • The trademark is deceptive or misdescriptive. For instance, "Nana's Oatmeal Cookies" could not be granted a trademark if the cookies don't contain any oatmeal.
  • The trademark is primarily geographic, or the geographic description is deceptive. The phrase "Texas BBQ Chicken" could not be trademarked. However, "Bob's Best Bavarian Brew" could be trademarked, but only if the beer or brewing techniques originated in Bavaria (Germany).
  • The trademark copies or closely resembles government symbols, insignia or any US president.
  • The trademark is primarily a proper noun, including last names. Names like "Smith Accounting Services" or "Richard & Sons" could not qualify for trademark protection. However, it could be possible to protect unique logos, colors or fonts that are part of the company name and logo.
  • The trademark contains vulgar language, disparaging words or obscene symbols. In some cases, these forms of IP could be protected by a copyright instead.

Finally, a new trademark cannot conflict with an existing trademark in way that would likely confuse customers. When you apply for trademark protection in the US, the USPTO first searches through existing trademarks and makes sure that the new trademark isn't similar to existing trademarks in the following ways:

Sound

A name or phrase that sounds identical or similar to an existing trademark name will be denied trademark protection. For example, if someone opens a fast-food restaurant called "Macdonald's," then the restaurant owner won't be able to trademark the restaurant name because it sounds too similar to the existing trademark "McDonald's." The same would be true for someone who wanted to trademark a media network called "H-Bee-Oh" or "Em-Tee-Vee."

Appearance

The phrase or logo looks similar to an existing trademark. For example, it wouldn't be possible to trademark a coffee shop logo that features a blue mermaid because it's too similar to the green mermaid used in the Starbucks logo.

Meaning

A trademark cannot have the same or similar meaning to an existing trademark — this includes using synonyms and translations. For instance, it wouldn't be possible to trademark a beer called "Crown," since it's just an English translation of the Corona brand. It would also be impossible to trademark a cookie called "Slim Mints," since that name just uses a synonym for the established trademarked cookie name "Thin Mints."

Impression

If a phrase or logo includes the same design elements as an existing trademark, then it can't be granted trademark protection. A brand that uses the McDonald's yellow arches couldn't be trademarked, even if the "M" stood for a completely different name.

A trademark also cannot express a similar meaning to an existing trademark. For example, a restaurant called "Burger Queen" would be impossible to trademark since it conveys a similar general meaning as the established brand "Burger King."

Related Goods and Services

Similar trademarks can't offer similar products and services. Therefore, a trademark application for "Starbucks Tea" would be denied because the products are too similar to the established "Starbucks Coffee" brand.

Using a trademark that confuses customers is not only likely to result in a denied trademark application — there's also a good chance that the owners of the established trademark will take legal action against you. However, keep in mind that these restrictions only apply to trademarks that are within the same commercial space or market segment. Therefore, it's theoretically possible to open an auto dealership called "Macdonalds,"" since there's very little chance that a customer would confuse it for the restaurant chain.

Who Regulates Trademarks in the US?

Unlike patents, trademark protection and regulation happen at the state and federal levels. At the federal level, the US Patent and Trademark Office (USPTO) is the government agency responsible for accepting and reviewing trademark applications, as well as registering trademarks and making them available to the public.

In addition, each state has its own trademark office that tracks and registers trademarks used within the state.

Do I Need to Register My Trademark?

People and businesses have certain common law trademark rights as soon as they start publicly using a trademark within a certain area. The easiest way to declare common law ownership of a trademark is to add a ™ superscript to the mark.

If you find that someone else in an area is using your mark without your permission, then you have the right to stop them. However, it may be difficult to establish who came up with the trademark first, especially when both parties claim to have created the trademark at about the same time.

Registering a trademark serves as an official public record of your trademark's "birthday" and will make it easier to resolve ownership disputes in the future.

Should I Register for a State or Federal Trademark?

When registering a trademark, applicants have the option of applying at the state level, federal level or both.

State Trademarks

Compared to federal trademarks, state trademarks are much easier and less expensive to obtain. While each state can have its own laws regarding trademark protection, most states' laws are modeled closely after the same template, the Model State Trademark Bill. Once the trademark is approved, you have the right to use the trademark within the state. State trademarks are entitled to use the ™ superscript.

Federal Trademarks

Federal trademarks offer protection across the country. However, both registration fees and processing times are much higher and longer than registering a state trademark — some applications take years to reach a decision. Federal trademark applications are assigned to special attorneys who carefully review and respond to each application with additional questions or requests for information. Federal trademarks are allowed to use the ® symbol.

Applying for Both State and Federal Trademarks

State agencies use their own registers to compare the proposed trademark to others. This means that it's theoretically possible for someone to independently create the same trademark and file for it in another state. A bigger problem can happen if someone else registers a similar federal trademark while you have a state trademark. If this happens, then you would be limited to using your trademark within your state as long as the other federal trademark exists. To avoid running into these issues, most people choose to register both state and federal trademarks. Since state trademarks process more quickly, they can offer a kind of carry-over protection while waiting on the slower federal application that offers more protection.

Do Trademarks Expire?

Unlike patents, trademarks don't expire. A trademark can be renewed as long as it remains in use. After 10 years, owners of federal trademarks must show the USPTO that their trademarks were actively used between the 5th and 6thyears. If a business shuts down or if the owners forget to show that they've been using the trademark, then the USPTO can remove the trademark from its records.

The renewal period for state trademarks varies from state to state. In most cases, state trademarks must be renewed every five years.

Should I Apply for a Trademark?

Registering a trademark is a major step toward building a brand. Trademarks allow businesses to shape how customers make positive connections between the trademark and the business. You should consider registering a trademark if:

  • You have an original design that helps people identify your business or its products and services.
  • You want to prevent competitors from using a similar mark that could confuse customers.
  • You're ready to commit to regularly using your trademark in the long term.
  • You're confident that no one else is using a similar trademark in your area (state trademark) or country (federal trademark).

Keep in mind that trademark protection doesn't cover technical or commercial information such as product designs, customer lists or secret recipes. Our next articles on trade secrets and patents explore the best options for protecting these types of valuable IP.