Trademark is the
legal term for a word or phrase that distinguishes one brand from another and that
customers rely on to know the source of the product.[1]
If you are thinking about starting a business, consider these few simple steps
for how to use the legal framework of trademark with a marketing perspective to
get the best outcome for your new business.
Step 1: Naming Your Business
One of the
first steps[2] of
launching a business is choosing a name. In that moment, the founder has a
multitude of directions to choose from that could alter the course of success
for the business. Whatever they decide will be the first impression customers
have of a business or product. Should founders choose a literal, descriptive[3] name (such as “Detroit Automobile Repair”) to make sure their audience has a clear picture of
what sort of business with which they are interacting? Or is it a better idea
to choose a more arbitrary[4] or fanciful[5] name (such as “Apple” for
electronics[6] or
“Shell” for gasoline[7]) that does not impart any
information to new customers but will ultimately stick in their minds?
If a business
owner wants to protect their name from being used by competing businesses, it
may try to register a trademark, which will be discussed more in depth during
the second step. More unique words or phrases
will receive stronger protection.[8] This means that it would be easier to stop
competitors from using similar names and will solidify a brand.
However, there is still a tradeoff when choosing a name.
While the legal aspect is more secure, it could be a marketing risk to label a
business as a seemingly random, unrelated word to the products or services they
sell. But you could ultimately be rewarded when your brand becomes a household
name.
A trademark is one of a company’s most valuable and important assets[9] since they give customers a first impression and have their own monetary worth. Starting off on the right foot can launch a business’s success. One can imagine a very different technological landscape if Google had decided to stick with their name idea “BackRub.”[10] Names matter, and trademark law recognizes that.
Step 2: Federal Registration
Registering your business name as a trademark with the
United States Patent and Trademark Office (USPTO)[11] will give you the
exclusive right to use that name, or in USPTO terminology, a mark, within a
specific area of use in commerce.[12] The initial steps of registering a trademark[13]
include potentially consulting with a licensed attorney, submitting filing
paperwork, and paying the fees (starting at $225 for one category of goods and
services).[14]
It may be also helpful to browse through the USPTO’s numerous informational videos to gain an even stronger understanding.
Owning a registered trademark is not a requirement for
running a business, but having the authority to put the “®” after the title gives a
certain stamp of approval that customers may see as appealing, as well as other
benefits the registration confers. However, not all names are registrable.[15] Primarily, marks that are
already in use cannot be copied. The USPTO will consider if customers will
likely be confused when deciding whether or not to register a mark that is
similar to an already-existing one.[16] In order to avoid overlapping
with an existing mark, anyone can use the USPTO’s database
search feature[17] to find what is already out
there. By taking this preliminary
measure, you can avoid trying to register a name that will be an automatic
“no.”
Apart from that basic tenet of trademark law, the
hierarchy[18]
of generic, descriptive, suggestive, and arbitrary/fanciful will also influence
whether or not the USPTO will register a word or phrase as an official
trademark. A mark that leans towards descriptive may be refused registration
since it does not properly distinguish that brand from other brands.
Additionally, there are certain
categories that the USPTO will outright refuse to register as a baseline
matter. These include surnames, marks that are geographically descriptive of origin,
foreign words that translate to a descriptive or generic term, and book or
movie titles.[19]
Despite the legitimacy and
legal security it provides, federal registration is not the end-all, be-all of
entrepreneurship. Common law protection, a more informal framework, will still
allow a business to operate with even the most basic name, such as “Coffee
Shop.” The downside of foregoing federal registration is the forfeiture of the
right to sue or otherwise prevent someone else coming to town and using your same
name. It also only gives you a territorial right to use it, so you would be
relatively stuck in a geographic location. Especially if a business sees a
future strongly rooted in a certain community and does not mind allowing
competitors to use its name, registration is optional.
Step 3: Brand Maintenance
The good news about successfully registering a
trademark is that protection is indefinite,[20] as long as a mark owner
maintains certain upkeep. First, you must continue to use the mark in commerce.[21] Second, documentation is
required by the USPTO after the fifth year, ninth year, and every ten years
from there.[22]
Aside from the legal paperwork, companies spend extensive
time, energy, and money to craft advertising campaigns[23]
to keep their name fresh in consumers’ minds and to stay relevant in an
ever-changing world. If necessary, a founder can always go back to square one
of re-naming and rebranding to rebuild their company with a whole new identity.
[1]
https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf
[2]
https://www.sba.gov/business-guide/10-steps-start-your-business
[3]
https://www.justia.com/intellectual-property/trademarks/strength-of-marks/descriptive-marks/
[4]
https://www.justia.com/intellectual-property/trademarks/strength-of-marks/arbitrary-marks/#:~:text=Like%20fanciful%20marks%2C%20arbitrary%20marks,no%20connection%20to%20the%20meaning.
[5]
https://www.justia.com/intellectual-property/trademarks/strength-of-marks/fanciful-marks/
[6]
https://www.apple.com/legal/intellectual-property/trademark/appletmlist.html
[7]
https://www.shell.com/business-customers/chemicals/doing-business-with-us/trademarks.html
[8]
https://cyber.harvard.edu/people/tfisher/IP/1976_Abercrombie_Abridged.pdf
[9]
https://www.forbes.com/sites/seanstonefield/2011/06/15/the-10-most-valuable-trademarks/?sh=69d45b9236b8
[10]
https://www.businessinsider.com/the-true-story-behind-googles-first-name-backrub-2015-10
[11] https://www.uspto.gov/about-us
[12]
https://www.wipo.int/trademarks/en/
[13]
https://www.uspto.gov/trademarks-application-process/filing-online
[14]
https://www.uspto.gov/trademark/trademark-fee-information
[15]
https://www.law.cornell.edu/uscode/text/15/1052
[16]
https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf
[17] https://www.uspto.gov/trademarks/search
[18]
https://www.inta.org/fact-sheets/trademark-strength/
[19]
https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf
[20]
https://www.ama.org/pages/what-is-a-trademark/
[21]
https://www.uspto.gov/trademarks/maintain/keeping-your-registration-alive
[22]
https://www.uspto.gov/trademarks/maintain/keeping-your-registration-alive#Deadlines-for-registrations-based-on-the-Madrid-Protocol%C2%A0