Make Your Mark

Your brand embodies the entire goodwill of your business. Put out a quality product or service in connection with using your trademark and you will develop a loyal customer following. For example, consumers familiar with Apple’s past products will line up for hours just for the chance to get the latest offering, often without doing any research on the quality of the new product at all. Those who love Big Macs know that they can walk into any restaurant branded with the Golden Arches and enjoy the same meal, no matter where they are. This is the power of trademarks.

Consumers make purchasing decisions every day based entirely on trademarks. Imagine a world without trademarks, where finding your favorite cereal would entail rummaging through a whole aisle of similar looking boxes, reading the fine print until you found the one with the ingredients you like, manufactured by the company you trust. Given the importance of trademarks in purchasing decisions, you should always take the time and effort to come up with a brand that you can protect as it may become your most valuable asset.

Brian Downey
Brian Downey

Choose Wisely

Not all trademarks are created equal. They come in varying degrees of “strength.” The strongest of marks will receive the broadest scope of protection against infringers and imitators, while the weaker marks may receive little protection at all. Trademark law divides marks into four basic categories: generic, descriptive, suggestive and arbitrary/coined.

Generic words for a product or service cannot be protected under trademark law. Branding your advertising services as “ad agency” will not allow you to stop any other advertising agency from using those same words.

Descriptive marks, as the name suggests, describe some aspect or feature of the product or service. “Mountain grown,” for example, describes all coffee beans as they must be grown above a certain elevation. Descriptive marks are only protectable if the owner can demonstrate “acquired distinctiveness,” in that consumers associate the mark exclusively with their product. If you can demonstrate substantially exclusive use of the term for five years, the law presumes that your mark has acquired distinctiveness.

Suggestive marks indicate some aspect, quality or feature of a product. Coppertone, for example, “suggests” the desired result of using the product. Suggestive marks are protectable immediately upon use.

Arbitrary marks tell you nothing about the product or service on their face. “Apple” would be an example of an arbitrary mark for computers. Coined marks consist of words that cannot be found in the dictionary, such as Xerox. Arbitrary and coined marks are considered the strongest of trademarks and will be granted a much broader scope of protection.

Clear the Way

Once you have selected your mark, you should always have a trademark search performed. In the United States, trademark rights arise out of use, and trademark infringement does not require a showing of bad intent. As such, if someone else is already using a mark that is confusingly similar to the one you plan to use, jumping into the water with your mark without looking first can end up drowning your business in infringement litigation.

A thorough trademark search by a professional will look at both currently registered marks as well as unregistered “common law” marks to determine whether your mark is likely to cause confusion with those already in use.

Likelihood of confusion is based on a number of different factors. For example, marks can be identical without causing confusion when they are used on very different products or services. Delta is used on airline services, faucets and dental insurance services. On the other hand, marks need not be identical to cause confusion. Zerocks would certainly be found to be confusing with Xerox if used on copying machines.

Due to complexity of the likelihood of confusion inquiry, it is always best to have a search performed by a trademark attorney who can provide you with an opinion on legal issues relating to the adoption, use and registration of your proposed mark.

Nothing is worse than launching a new business or product, having some success, and then receiving the dreaded cease and desist letter. Rebranding can cause a complete loss of momentum. Further, damages for trademark infringement can include all of your profits relating to the infringement. The ounce of prevention represented by a clearance search is always less expensive than litigation and the complete disruption that an infringement lawsuit can bring to your business.

Mark your Territory

With your mark selected and cleared, it is always a good idea to obtain a federal registration. Without a registration, your rights will be based on the territory in which you have made use of your mark. If you are a restaurant chain in the Midwest and do not have your mark federally registered, someone else may use the identical mark on restaurants in California. Without a registration, you will be powerless to stop them. With a registration, you have the legal presumption that you have the exclusive right to use your mark throughout the United States.

Not only is your brand your reputation, but consumers also latch onto it when making decisions. From cars to restaurants to clothes to tax services, we all make purchasing decisions based entirely on trademarks every day. Given this reality, the decisions you make and actions you take in adopting and protecting your trademarks are some of the most important decisions that you will undertake in your business.