Trademark Strength Scale: Branding Strategy in Naming Your Business

Trademark Scale

Your brand name will identify your product, conjure your company backstory, and set immediate expectations of quality with customers. With this level of importance, how do you go about selecting a proper business name? Thankfully, the following spectrum outlines the classifications of types of trademarks by strength.

Fanciful or Coined Marks (strongest)

Fanciful trademarks are completely new (“coined”) words without an alternate dictionary definition. These trademarks are inherently distinctive, because there is no competing meaning. Examples include KODAK for film and EXXON for oil products.

Arbitrary Marks

Arbitrary Marks include words that have a pre-existing meaning, but the word is used in a new way to represent an unrelated product. Examples include APPLE for computers and CAMEL for cigarettes.

Suggestive Marks

Suggestive marks include hints toward the nature or attributes of a good or service. However, a suggestive mark does not directly describe the product or service. For example, MICROSOFT for computer software suggests software on a microcomputer without directly describing the product. Additionally, NETSCAPE suggests the landscape of the internet without directly describing a browser. Suggestive marks require imagination, thought, or perception to relate to the product, whereas descriptive marks do not.

Descriptive Marks (Weakest)

Descriptive marks merely describe an attribute or quality of the product or service. These descriptions are not inherently distinctive when used to represent a product. For example, LIGHT for computers is descriptive of the weight of a computer. Furthermore, SHARP for televisions is descriptive of picture quality.

If a mark is merely descriptive, the United States Patent and Trademark Office will not allow registration on the primary register. However, if acquired secondary meaning can be shown, then the mark may be registered on the supplemental register. Acquired secondary meaning means that the term is recognized in the market for both the descriptive quality and also as a representation of the product. However, proof of secondary meaning can be expensive to acquire. In our examples above, SHARP was registered through the supplementary register through acquired secondary meaning.

Picking a Place on the Trademark Strength Spectrum

The immediate question is why don’t more businesses aim for coined terms, if they are the most distinctive? Fanciful marks are difficult to create. In fact, many large businesses hire marketing firms to create a fanciful mark that isn’t distracting from the product. In addition to this cost, less descriptive trademarks require more advertising dollars to educate the market. However, aiming low for a descriptive mark can delay your trademark registration until acquired secondary meaning can be proven. Proving this meaning can have additional costs, such as the high cost of market surveys. As a result, many companies try for suggestive marks to hint at an aspect of the product while retaining inherent distinctiveness.

If you have an idea for a new trademark for your business, product, or service, try out a free U.S. trademark search engine to search for existing marks.

If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Designating Your Trademark in Use

Registered and Unregistered Trademark Symbols

What is a Trademark?

A trademark is word, design, or sound that identifies the source of a product or service. Trademarks are used “in commerce,” such as on product packaging in stores or in online descriptions. Trademarks set customer expectations regarding quality of the product. These expectations can influence purchasing decisions. For example, “Elmer’s” is a well-known trademark for glue. Their glue is non-toxic, dries quickly, and works for general purposes. Therefore, many parents will automatically reach for Elmer’s glue over competitors when making back-to-school purchases.

How are Trademark Rights Established?

Use in commerce can establish common law trademark rights, if the mark is not confusingly similar to another mark. However, common law rights can be geographically limited based on the market reach of the product or service.

Alternatively, trademark rights can be established through registration. For example, federal registration requires filing a trademark application with the United States Patent and Trademark Office (USPTO). An applicant can file either before or after actual use of the trademark. Filing before is called an “intent-to-use” application, whereas filing after is referred to as an “actual use” application.

Regardless of the type of application filed, actual use will have to be proven before registration. For proof, the entire phrase or design will have to be used in at least one instance of the sample submitted to the USPTO. The application may prevent others from receiving a trademark that is too similar, if filed later. However, the applicant does not have a trademark until the USPTO allows registration.

How to Designate Goods or Services with a Trademark

You may have noticed that sometimes a trademark is labeled with ™ and others are labeled with ®. The difference between the two is that ™ is used for trademarks that are not federally registered. This includes common law trademarks and when an application is filed but not yet registered. On the other hand, ® can be used when a registration has been secured from the USPTO.

Use of the symbol is not federally regulated. However, the ® symbol can only be used with federally registered trademarks. Furthermore, the ® symbol should be used with the full trademark at least once in commerce with the product. However, some companies have a policy of using the symbol every time the trademark is used to avoid ambiguity. For example, failure to use the symbol at all can result in decreased rights because other are not “on notice” to rights in the registered trademark.If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Intellectual Property Defined: Patents, Trademarks, Copyright, and Trade Secrets

Creating Intellectual Property
William Iven

Understanding Intellectual Property

Intellectual property is a broad term used to describe intangible property rights. The easiest visualization is to compare intellectual property with real property. Real property defines rights in something tangible and concrete, such as real estate. In contrast, intellectual property rights are less concrete and protect inventions, goodwill, creative expression, and business know-how. Under the umbrella of intellectual property, we have patents, trademarks, copyright, and trade secrets.

What are Patents, Trademarks, Copyrights, and Trade Secrets?

What is a Patent?

Patents protect inventions, new and useful structures or methods. When a patent is granted by the United States Patent and Trademark Office (USPTO), the inventor receives property rights in the invention. In most cases, the patent will remain in effect for 20 years from the filing date (or priority date, if applicable). Typically, maintenance fees are required at 3.5, 7.5, and 11.5 years to keep enforceability of the patent. U.S. patents are only in effect within the United States and its territory.

With patent rights, the patent holder can stop others from making, using, offering for sale, or selling the protected invention within the U.S. or importing the invention into the U.S. Therefore, a patent grants a negative right, the right to exclude others. No patent is required to simply make or use a product, so long as the product doesn’t infringe another patent.

Types of Patents

1) Utility patents protect any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. A utility patent application can either be provisional or non-provisional. A provisional application is a placeholder for a non-provisional for up to one year. The non-provisional application will actually be examined for patentability by the USPTO.

2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture.

3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

What Is a Trademark?

A trademark can be a word, name, symbol, design, sound, or combination that is used in commerce to identify the source of the goods or affiliation. The identity of the source or affiliation of the goods is helpful to consumers to identify the quality of the product and any message behind the product. A service mark is similar to a trademark, but identifies the source of a service rather than a tangible product. “Trademark” and “mark” can be used to refer to trademarks and service marks.

Trademark rights  protect  the goodwill associated with the source of the goods – i.e. the quality of the goods and the company message. Therefore, trademark rights may prevent others from taking advantage of established goodwill through use of a confusingly similar mark. However, others can make or sell the same or similar goods or build a similar company message behind a different mark. This is because another’s goodwill is not being used and reputation of an established brand is not being tarnished.

Although trademarks exist upon use, the common law rights are very geographically limited. USPTO registration is available for trademarks used in interstate or foreign markets. U.S. registration helps secure nationwide rights in the trademark. The registration procedure for trademarks and general information concerning trademarks can be found in the separate book entitled “Basic Facts about Trademarks.” (http://www.uspto.gov/trademarks/basics/Basic_Facts_Trademarks.jsp).

What is a Copyright?

Copyright establishes rights for authors in the creative expression of an idea. This provides rights in “original works of authorship.” Such works include literary, dramatic, musical, artistic, and other creative works. Copyright exists upon fixation of the work in a tangible medium that is human or machine readable. For example, recording a theatrical performance or writing out a script. Copyright grants the owner exclusive rights to reproduce, distribute, publicly perform, publicly display, or to create derivative works.

Importantly, the “creative expression” that is protected does not protect the underlying idea. Therefore, describing an invention could provide copyright in the creativity of the description, but would not prevent others from making and using the invention. Additionally, copyright in a theatrical work may not necessarily prevent others from using a similar story arc. Copyright can be registered with the Copyright Office of the Library of Congress.

What is a Trade Secret?

A trade secret comprises business know-how, such as efficient manufacture of a product, distribution, market integration, etc. Other examples can be formulas, recipes, patterns, compilations, programs, devices, methods, techniques, or processes. Trade secret protection can be used to prevent others, such as employees, former employees, or other companies, from obtaining and using the trade secrets to compete. Although trade secrets are not formally registered, the U.S. provides for actions in federal court under the Defense of Trade Secrets Act of 2016.

Proving a trade secret includes proving that the information is secret, that the information is commercially valuable because it is secret, and that the information is subject to reasonable steps to keep it secret. For example, non-disclosure and non-compete contracts, separation of knowledge within the company, and internal controls to prevent dissemination can help. Unlike patents, trade secrets do not expire as long as secrecy is maintained. However, trade secrets do not prevent others from using the information in the event of independent discovery. More info on trade secrets can be found here: https://www.uspto.gov/patents-getting-started/international-protection/trade-secret-policy.

 If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

Design Trademark or Standard Character Trademark: Which is Broader Protection for Your Business Name or Product?

We’ve previously mentioned that you may protect the goodwill built into your business name or your product names through trademarks. This goodwill encompasses the learned customer expectation related to your business. Federal registration of your trademark can put the entire country on notice of your rights in your trademark. Furthermore, the United States Patent and Trademark Office (USPTO) will not issue a trademark that’s deemed too similar to an existing mark. Therefore, filing first can give you a leg up in the trademark land rush.

Consider a company that has a logo that includes both a word and a design. It’s possible to receive trademark protection on both the word and design. However, the USPTO requires designation of a trademark application as either a word mark or a design mark, among other more exotic options. An application cannot be designated for both design and word mark protection.

How should the company choose the broadest protection?

The common knee-jerk answer is that the word mark is broader, as the background design isn’t required for infringement. However, the true answer isn’t exactly straightforward. Imagine the trademark for Hot Wheels, which include both the words “Hot Wheels” and a stylized swooping flame.

If the word trademark is filed alone, trademark protection may prevent others from filing or using the words “Hot Wheels.” Changing the background design of the stylized logo does not avoid infringement. Therefore, the word trademark alone may not prevent others from using the stylized flame with different words, such as “Smokin’ Ride.”

On the other hand, companies that use the swooping flame may infringe a corresponding design trademark, even with different words. Note that companies may avoid infringement by changing color, if color is claimed in the mark.

Therefore, the broadest protection requires obtaining both a word trademark and a separate design trademark.If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law

What’s in a Name? Protecting Your Goodwill through Trademarks

Unfortunately, not all ideas are patentable. A full analysis is well beyond the scope of this blog post, so we’ll use an example instead. Consider a new retail concept, such as a frozen yogurt shop. The owner may want protection and some sort of exclusivity in the business. However, the owner does not have any novel recipes or any new inventive manufacturing processes.

Without an invention for patent protection, can the owner protect his business?

Absolutely! The owner can protect, among other things, his goodwill built into his business name through trademark (subject to anyone’s trademark that already exists). Goodwill is a complicated legal term that we can also break down into a real-world example.

McDonald’s is a well-known fast food restaurant. When you go to McDonald’s, you expect a certain quality and speed of service and a certain quality of food. This consumer knowledge and expectation is the goodwill built into the business name. McDonald’s also has a trademark on the name “McDonald’s” in the fast food industry to protect this goodwill. Trademark protection deters other business owners from setting up shop under the McDonald’s name without approval. In turn, the trademark owner can police quality and consumer expectations related to the trademark.

How can the frozen yogurt shop owner go about protecting his business name with trademarks?

The simple answer is to file a trademark application with the United States Patent and Trademark Office. In fact, the business owner can file while setting the business up. All that is required is a bona fide intent to use the mark in commerce. Then, the business owner can file proof of actual use at a later date. Alternatively, the business owner can file proof of actual use up front, as long as the submission matches the goods or services described under the trademark.If you need help with your patents, trademarks, copyright, or trade secrets, please contact us.

Jeremy I. Maynard
Registered U.S. Patent Attorney
Troutman & Napier, PLLC
4740 Firebrook Blvd.
Lexington, KY 40513
Tel: 859-253-0991
Web: Troutman & Napier, PLLC
Originally Published at: Maynard.Law
Originally Published by: Maynard.Law