It is important to select a mark that can be registered as a Federal Trademark prior to introducing the business or product name into the marketplace. Businesses should be very careful in selecting a mark so that they retain the ability to obtain registration and prevent others from using their business, service, or product names.
A mark can be classified into one of four categories as being:
- descriptive, or
The “strength” of a mark is determined in part by where it falls on this spectrum. Devices that are fanciful, arbitrary, or suggestive are distinctive enough to function as trademarks. Fanciful marks are considered stronger than suggestive marks, and therefore are granted greater protection by the courts. On the other hand, if a mark is descriptive, the mark can function as a trademark or service mark only if the mark has obtained secondary meaning. Generic marks can never be a trademark.
Do I Need a Trademark lawyer?
Filing a trademark application at the USPTO starts a legal proceeding that may be complex and will require you to comply with all requirements of the trademark statute and rules. Most applicants hire an attorney who specializes in trademark matters to represent them in the application process and provide legal advice. While a USPTO trademark examining attorney will try to help you through the process even if you do not hire a lawyer, no USPTO attorney may give you legal advice. Once you hire an attorney, the USPTO will only communicate with your attorney about your application. A private trademark attorney can help you before, during, and after the trademark application process, including helping you police and enforce the trademark registration that may issue from your application.
While you are not required to have an attorney, an attorney may save you from future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks—all done before you file your application. Comprehensive searches are important because other trademark owners may have stronger protected legal rights in trademarks similar to yours even though they are not federally registered. Therefore, those unregistered trademarks will not appear in the USPTO’s Trademark Electronic Search System (TESS) database but could still ultimately prevent you from using your mark even if the USPTO registers your mark.
In addition, trademark lawyers can help you navigate the application process to provide optimal protection of your trademark rights, by, for example, accurately identifying and classifying your goods and services, and preparing responses to any refusals to register that an examining attorney may issue. Further, a Trademark attorney can help you understand the scope of your trademarks rights and advise you on the best way to police and enforce those rights, including what to do if other trademark owners allege that you are infringing their mark. Remember, enforcement of trademark rights is your responsibility, not that of the USPTO.