Can I Trademark My Brand Name?
I have family who bought horses several years ago. I was living in Silicon Valley at the time, so I never actually saw the horses.
They didn’t keep them very long, though. The horses spooked easily and, eventually, threw an inexperienced rider to the ground, resulting in a head injury.
I still remember where I was the morning I received a call that the rider was injured. She eventually recovered, but it was a scary event, even as I watched and heard about the updates from a few states away.
Horses are a big investment. And a big commitment. That was a lot of time, money, effort, and ultimately injury to realize that buying those horses was a bad idea.
Getting a Trademark is like Getting Horses
Just like buying horses is an investment, so is choosing a brand name. And I’ve watched many people jump into a new business enthusiastically only to find out that the name they chose (and used on their signage and advertising and inventory) was ultimately a poor choice.
Fortunately, you can do some investigating upfront (we call it “due diligence”) to evaluate whether or not a brand name might be a good choice for your business.
Here are a few things you should know about the due diligence process for trademarks, specifically when you perform clearance searching to determine how much risk is involved with a particular brand name.
Protecting Your Brand in the United States
In the United States, trademark searching typically incorporates three aspects:
- Assessing whether a mark is “available” for use with particular goods or services
- Determining whether a mark qualifies for protection under applicable U.S. trademark laws
- Evaluating whether the mark can be registered with the U.S. Patent and Trademark Office
Avoid Conflicting Marks
An owner of a federally registered trademark has substantial rights to prevent others from using a “conflicting mark” in a way that would cause confusion to consumers relative to the owner’s mark. Likewise, in selecting a mark for branding, you should try to select a mark which is unlikely to cause confusion with consumers of competing goods or services.
Avoid Marks that Cannot be Registered
Not all marks can attain protection under U.S. trademark laws. The following types of marks typically cannot be protected:
- Generic marks generally used to describe a product or service
- Descriptive marks used to describe the products or services for which they are used, or of a quality or feature of those products or services
- Deceptive marks, including deceptively misdescriptive and geographically deceptive
- Morally or culturally offensive
- Confusingly similar to or likely to dilute another mark
- Surnames (unless acquired distinctiveness for the goods or services)
- Geographical place (unless acquired distinctiveness for the goods or services)
Even though a mark might not qualify for registration on the “Principal Register” initially, it may be possible and advisable to register the mark on the “Supplemental Register” as a first step toward later registration on the “Principal Register.”
The Registration Process
To attain formal registration, an owner must submit a trademark application with the required information and fees. The U.S. Patent and Trademark Office will examine that application for compliance with applicable laws and standards, including those listed above.
How to Anticipate Potential Trademark Registration Problems
Although there are no guarantees that a mark might get registered, an analysis of search results can help in evaluating whether there are any known circumstances which might prevent registration or be dealt with in advance. The scope of searching and analysis performed typically depends on the owner’s budget and tolerance for risk.
Identifying Risks in the Trademark Process
At the end of a preliminary clearance analysis, here are the three types of risks you should be able to assess:
- Risk of Potential Likelihood of Confusion – High risk means a USPTO examining attorney would probably say your mark can’t be registered because it is too similar to another mark that is already registered or used for similar products or services. Obviously, the lower the risk here, the better your chances of getting your registration granted.
- Risk of Potential Descriptiveness – High risk in this category means your mark will probably be considered merely descriptive and if so, can’t be registered. A mark that is suggestive might be considered a moderate risk because you’ll probably have to convince the examiner that the mark is suggestive, and not merely descriptive. Fanciful, arbitrary, and coined marks usually have a very low risk.
- Risk of Other Factors – There are a number of other factors that don’t always impact your trademark, but will create obstacles in some situations. These often relate to special circumstances that are fact-specific.
Maximizing your Application for Successful Trademark Registration
By Identifying risks early in the process, you should be able to craft an application with a higher chance of successful registration. At a minimum, you should be able to identify the type of mark and the types of goods and services (possibly covering multiple classifications) that will optimize your ability to setup up the right discussion with the USPTO examining attorney.
Instead of betting on the wrong horse, or the wrong trademark, careful planning and insightful analysis at the beginning of the process will help you make the best choice for you and your business.
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