The Trademark Creation Process: Create, then seek (and hopefully you shall not find).
The actual trademarking process is based, in roughly equal parts, on a formula involving one half creativity and one half legal decision-making. From personal experience, the first half is much more fun because you get to truly breakdown your product and get inside the heads of your prospective customer base to figure out just what name or symbol will resonate most with them. On the other hand, the legal side of getting a trademark (doing a search, reviewing other trademarks for overlaps with your trademark, and actually filing the mark) isn’t so fun, unless you are an attorney in which case this is supposed to be your “thing”.
What all is involved when you pick a trademark? How do you pick a trademark and what should you think about when picking it? Do you have to obtain clearance of a mark with some agency or office before you file the trademark? Look no further, we’ll dive into these questions right here.
I. Picking the Trademark and Defining It
A. Picking the Trademark
Choosing a trademark is a multi-step process composed of the following steps: (1) creating the symbol or word itself that is to be protected; (2) thinking about what products and services the mark will be used with; and (3) making sure that the trademark is not used by others.
Trademarks are forms of intangible property. Just like real property, a trademark has metes and bounds within which rights can be claimed and enforced. In real property, if a piece of land is purchased in a high-density area, the property owner may be boxed in and unable to exercise a broad claim to the surrounding land. Moreover, any surrounding land that a property owner seeks to purchase to allow it to do the things it wants to do can be purchased at a high price. If the property is purchased in a rural area with few other owners around, the property owner may be able to purchase multiple plots and exercise a wider array of rights.
Similarly, a trademark can give broad or narrow rights depending on the availability of the trademark in a particular area of business. Choosing a word or symbol that is uncommon or coined will allow the owner of the mark to have broader rights to enforce the trademark and prevent others from using it, for example. Most businesses want to carve out the widest swath of area where they can use their trademark. A broader swath of trademarks will clear the path for the owner to use the trademark exclusively while making it necessary for other businesses to try and distance themselves from the mark. While specially designed logos may be the easiest way to get these broad rights, words that function as trademarks can also be given broad protection. For example, EXXON and KODAK (both made up words) enjoy such broad protections that it is practically impossible for other companies to use any similar trademarks.
So how do you go about choosing a trademark? No matter what kind of a trademark you choose (a logo design or a word mark), always remember: conveying the source of the product is the key function of a trademark! More than anything else, you want the trademark to tell consumers something about YOU as the trademark owner as opposed to just something exclusively about the product. For example, if your trademark is a logo design, the process begins with thinking about your company and the story behind it, the message you want to send to consumers, the experiences of the founders, and the essence of what the company offers to consumers. If your trademark is a word mark, the considerations are much the same, although you want to be mindful of the following classifications as these can dictate whether your trademark will receive the most amount of protection:
Generic Terms: Avoid these types of names at all cost because they cannot be protected as trademarks! These are names like “wheels” for car rims or “cream” for men’s shaving cream.
Descriptive Terms: As a general rule of thumb, words that describe a feature or characteristic of the underlying product or service cannot be protected as trademarks. Examples of a descriptive trademark is “Jar of Greens” for packaged green beans or “Cheese on a Stick” for fried cheese curds served on a wooden stick. Getting trademark rights in a descriptive word is not impossible, but it will take many years of use of the name in the marketplace.
Suggestive Terms: These types of words don’t describe a product or service exactly, but they tend to say something about it. Upon seeing the word, a consumer would need to use their imagination to truly connect the word with a feature or characteristic of a product. Examples of suggestive trademarks are “Top Flight” for golf balls (the golf ball reaches maximum height when it is hit) and “Stronghold” for zip ties.
Fanciful/Arbitrary Terms: These types of words are afford the most protection because they either consist of words that are not common dictionary terms or they are words that are used in connection with products or services that have nothing to do with the word. Fanciful marks include the EXXONs, KODAKs, and XEROXs of the world. Apple (as in Apple Computer) is arbitrary because, of course, apples and computers have nothing to do with each other.
As you might suspect, the above categories were created by lawyers and judges. And as you might fear: these categories dictate the selection of a mark to a certain degree. For these reasons, the selection of a trademark requires both creative thinking (to satisfy the marketing desire for communicative elements) and the legal objective (for development of a trademark that affords the greatest amount of protection.
Don’t be discouraged by all of these guidelines; picking the trademark is the fun part! You can be the master of your own domain and determine the course of your brand identity. Just remember: the more unique the name or symbol, the more likely it is to receive broader protection.
B. Defining the Trademark
Once you’ve chosen a name, don’t turn off the spigot of creativity quite yet. You still have to think about where your trademark is going to be used. In the U.S. and around the world, trademark rights are granted according to specific classes of goods and services. Most businesses only offer one type of good and service. Even if a company offers only one type of good or service, it has to define what it does or makes.
Believe it or not there is some strategy involved here and it goes to the issue of breadth of rights as we discussed above. For example, say your company makes specialty shirts and hats made from recycled materials (you know, eco-friendly type stuff). Your brand is a lifestyle brand because you market your products to consumers who appreciate eco-friendly products and integrate these into every aspect of their lives. If you make clothing, you may someday make eco-friendly hats, jackets, sweaters, pants, bags, luggage, briefcases, and phone cases, all under the same brand. So instead of defining your product narrowly in terms of things you are making now, think longer-term to what you might be making in the future.
When you think of your brand this way, you are actually opening up the amount of rights you will receive because the brand is expanded across multiple product markets. And as we will see below, filing a trademark before anyone else can go a long way in ensuring that the brand you want for your products and services is available.
II. Search and Discover
Searching other trademarks (or “clearing the mark”, in legal lingo) is the process of determining whether the mark you have selected is available to use in the marketplace. “Available” doesn’t necessarily mean completely unprecedented; it merely means that the use of the trademark that your business makes is not likely to confuse or dilute another trademark which was being used before your trademark. Remember: the goal of selecting a trademark is to define the largest niche for your trademark so that it is economically and legally strong. A mark is economically strong if it can properly communicate that you are the source of a particular product; a mark is legally strong if it communicates this information without impacting the rights of somebody else.
With a trademark (or a list of trademarks) in hand, you are ready to conduct a search to figure out just how broad of a niche your name can fill. There are several types of searches available. As you might suspect, the more detailed the search, the higher the price.
Internet Knockout Search: The least expensive type of search is one conducted without the aid of an attorney or a professional search service. These searches are confined to the internet and perhaps the United States Patent and Trademark Offices website (which provides a public database of all trademark applications and registrations). These searches are GREAT for finding early eliminators (i.e. trademarks that your business would be clearly be infringing upon if you elected to use a specific mark). BUT, they are not good to hang your hat on because they lack the level of detail that would reveal other matches that are not so obvious (i.e. trademarks that sound like your mark but are not spelled the same way). Unless you are an expert at keyword search terms and Boolean logic, you won’t want to stop with this kind of a search if you indeed have found a mark that you are 100% set on.
Clearance Search: This search, conducted by an attorney or a professional search company, includes only the United States Patent and Trademark Office’s database of trademark applications and registrations. It will find exact matches between your trademark and other marks along with marks that look or sound the same (but are not identically spelled). The value of this search, much like the Internet knockout search discussed above, is that it helps you see what other trademarks exist which may pose major conflicts to your attempt to register a trademark. This search carries a price tag of anywhere between $150 and $350 dollars and should probably only be conducted once you have identified a mark that you are 100% set on and which has not been ruled out by an Internet knockout search that you have conducted.
Full Search: By far the most comprehensive and most “gratifying” search is a full trademark search which includes not only the USPTO database but also state trademark databases, trade name databases, telephone directories, the Internet, and domain names. In addition to finding exact matches between your chosen mark and other trademarks, the search will also find marks that look like or sound like your mark and which, therefore, your mark would create a “likelihood of confusion”. Usually what happens is that you provide a professional search company with the details for your mark (the trademark itself and the type of goods/services you will be using the mark with) and the search company will compile a report of all the records that it feels are similar to your trademark and which could pose conflicts to your mark. To make heads or tails of the search results, you will almost always need an attorney to review the report and provide an opinion because an attorney will be better equipped to understand the legal nuances surrounding the different factors that determine whether your trademark indeed creates a likelihood of confusion with another trademark. This is a type of search you get when the trademark decision is a “bet the farm” kind of decision. Don’t expect to pay anything less than $1,000 for this type of search and opinion from an attorney.
That’s great, but how do I know which type of search to get? The type of search a trademark owner needs is dictated by the following considerations:
(1) The nature of the mark and whether the mark is a design or word mark (word marks are usually more important to search);
(2) The level of exclusivity to the mark that you want in a particular product or service market;
(3) The geographic scope of the interest you seek (local, national, or international);
(4) The importance of the mark and the proposed duration of use;
(5) (and one last DUH factor) The amount of money you want to spend on the search (again, for a mark that you will stake the future of the company on, don’t be a cheapskate).
Once a trademark has been fielded and searched, it is ready to be used in commerce and formally filed with the trademark office.
What all is involved when you pick a trademark? How do you pick a trademark and what should you think about when picking it? Do you have to obtain clearance of a mark with some agency or office before you file the trademark? Look no further, we’ll dive into these questions right here.
I. Picking the Trademark and Defining It
A. Picking the Trademark
Choosing a trademark is a multi-step process composed of the following steps: (1) creating the symbol or word itself that is to be protected; (2) thinking about what products and services the mark will be used with; and (3) making sure that the trademark is not used by others.
Trademarks are forms of intangible property. Just like real property, a trademark has metes and bounds within which rights can be claimed and enforced. In real property, if a piece of land is purchased in a high-density area, the property owner may be boxed in and unable to exercise a broad claim to the surrounding land. Moreover, any surrounding land that a property owner seeks to purchase to allow it to do the things it wants to do can be purchased at a high price. If the property is purchased in a rural area with few other owners around, the property owner may be able to purchase multiple plots and exercise a wider array of rights.
Similarly, a trademark can give broad or narrow rights depending on the availability of the trademark in a particular area of business. Choosing a word or symbol that is uncommon or coined will allow the owner of the mark to have broader rights to enforce the trademark and prevent others from using it, for example. Most businesses want to carve out the widest swath of area where they can use their trademark. A broader swath of trademarks will clear the path for the owner to use the trademark exclusively while making it necessary for other businesses to try and distance themselves from the mark. While specially designed logos may be the easiest way to get these broad rights, words that function as trademarks can also be given broad protection. For example, EXXON and KODAK (both made up words) enjoy such broad protections that it is practically impossible for other companies to use any similar trademarks.
So how do you go about choosing a trademark? No matter what kind of a trademark you choose (a logo design or a word mark), always remember: conveying the source of the product is the key function of a trademark! More than anything else, you want the trademark to tell consumers something about YOU as the trademark owner as opposed to just something exclusively about the product. For example, if your trademark is a logo design, the process begins with thinking about your company and the story behind it, the message you want to send to consumers, the experiences of the founders, and the essence of what the company offers to consumers. If your trademark is a word mark, the considerations are much the same, although you want to be mindful of the following classifications as these can dictate whether your trademark will receive the most amount of protection:
Generic Terms: Avoid these types of names at all cost because they cannot be protected as trademarks! These are names like “wheels” for car rims or “cream” for men’s shaving cream.
Descriptive Terms: As a general rule of thumb, words that describe a feature or characteristic of the underlying product or service cannot be protected as trademarks. Examples of a descriptive trademark is “Jar of Greens” for packaged green beans or “Cheese on a Stick” for fried cheese curds served on a wooden stick. Getting trademark rights in a descriptive word is not impossible, but it will take many years of use of the name in the marketplace.
Suggestive Terms: These types of words don’t describe a product or service exactly, but they tend to say something about it. Upon seeing the word, a consumer would need to use their imagination to truly connect the word with a feature or characteristic of a product. Examples of suggestive trademarks are “Top Flight” for golf balls (the golf ball reaches maximum height when it is hit) and “Stronghold” for zip ties.
Fanciful/Arbitrary Terms: These types of words are afford the most protection because they either consist of words that are not common dictionary terms or they are words that are used in connection with products or services that have nothing to do with the word. Fanciful marks include the EXXONs, KODAKs, and XEROXs of the world. Apple (as in Apple Computer) is arbitrary because, of course, apples and computers have nothing to do with each other.
As you might suspect, the above categories were created by lawyers and judges. And as you might fear: these categories dictate the selection of a mark to a certain degree. For these reasons, the selection of a trademark requires both creative thinking (to satisfy the marketing desire for communicative elements) and the legal objective (for development of a trademark that affords the greatest amount of protection.
Don’t be discouraged by all of these guidelines; picking the trademark is the fun part! You can be the master of your own domain and determine the course of your brand identity. Just remember: the more unique the name or symbol, the more likely it is to receive broader protection.
B. Defining the Trademark
Once you’ve chosen a name, don’t turn off the spigot of creativity quite yet. You still have to think about where your trademark is going to be used. In the U.S. and around the world, trademark rights are granted according to specific classes of goods and services. Most businesses only offer one type of good and service. Even if a company offers only one type of good or service, it has to define what it does or makes.
Believe it or not there is some strategy involved here and it goes to the issue of breadth of rights as we discussed above. For example, say your company makes specialty shirts and hats made from recycled materials (you know, eco-friendly type stuff). Your brand is a lifestyle brand because you market your products to consumers who appreciate eco-friendly products and integrate these into every aspect of their lives. If you make clothing, you may someday make eco-friendly hats, jackets, sweaters, pants, bags, luggage, briefcases, and phone cases, all under the same brand. So instead of defining your product narrowly in terms of things you are making now, think longer-term to what you might be making in the future.
When you think of your brand this way, you are actually opening up the amount of rights you will receive because the brand is expanded across multiple product markets. And as we will see below, filing a trademark before anyone else can go a long way in ensuring that the brand you want for your products and services is available.
II. Search and Discover
Searching other trademarks (or “clearing the mark”, in legal lingo) is the process of determining whether the mark you have selected is available to use in the marketplace. “Available” doesn’t necessarily mean completely unprecedented; it merely means that the use of the trademark that your business makes is not likely to confuse or dilute another trademark which was being used before your trademark. Remember: the goal of selecting a trademark is to define the largest niche for your trademark so that it is economically and legally strong. A mark is economically strong if it can properly communicate that you are the source of a particular product; a mark is legally strong if it communicates this information without impacting the rights of somebody else.
With a trademark (or a list of trademarks) in hand, you are ready to conduct a search to figure out just how broad of a niche your name can fill. There are several types of searches available. As you might suspect, the more detailed the search, the higher the price.
Internet Knockout Search: The least expensive type of search is one conducted without the aid of an attorney or a professional search service. These searches are confined to the internet and perhaps the United States Patent and Trademark Offices website (which provides a public database of all trademark applications and registrations). These searches are GREAT for finding early eliminators (i.e. trademarks that your business would be clearly be infringing upon if you elected to use a specific mark). BUT, they are not good to hang your hat on because they lack the level of detail that would reveal other matches that are not so obvious (i.e. trademarks that sound like your mark but are not spelled the same way). Unless you are an expert at keyword search terms and Boolean logic, you won’t want to stop with this kind of a search if you indeed have found a mark that you are 100% set on.
Clearance Search: This search, conducted by an attorney or a professional search company, includes only the United States Patent and Trademark Office’s database of trademark applications and registrations. It will find exact matches between your trademark and other marks along with marks that look or sound the same (but are not identically spelled). The value of this search, much like the Internet knockout search discussed above, is that it helps you see what other trademarks exist which may pose major conflicts to your attempt to register a trademark. This search carries a price tag of anywhere between $150 and $350 dollars and should probably only be conducted once you have identified a mark that you are 100% set on and which has not been ruled out by an Internet knockout search that you have conducted.
Full Search: By far the most comprehensive and most “gratifying” search is a full trademark search which includes not only the USPTO database but also state trademark databases, trade name databases, telephone directories, the Internet, and domain names. In addition to finding exact matches between your chosen mark and other trademarks, the search will also find marks that look like or sound like your mark and which, therefore, your mark would create a “likelihood of confusion”. Usually what happens is that you provide a professional search company with the details for your mark (the trademark itself and the type of goods/services you will be using the mark with) and the search company will compile a report of all the records that it feels are similar to your trademark and which could pose conflicts to your mark. To make heads or tails of the search results, you will almost always need an attorney to review the report and provide an opinion because an attorney will be better equipped to understand the legal nuances surrounding the different factors that determine whether your trademark indeed creates a likelihood of confusion with another trademark. This is a type of search you get when the trademark decision is a “bet the farm” kind of decision. Don’t expect to pay anything less than $1,000 for this type of search and opinion from an attorney.
That’s great, but how do I know which type of search to get? The type of search a trademark owner needs is dictated by the following considerations:
(1) The nature of the mark and whether the mark is a design or word mark (word marks are usually more important to search);
(2) The level of exclusivity to the mark that you want in a particular product or service market;
(3) The geographic scope of the interest you seek (local, national, or international);
(4) The importance of the mark and the proposed duration of use;
(5) (and one last DUH factor) The amount of money you want to spend on the search (again, for a mark that you will stake the future of the company on, don’t be a cheapskate).
Once a trademark has been fielded and searched, it is ready to be used in commerce and formally filed with the trademark office.