How To Trademark A Company Name

 

Just what is a trademark, in legal terms?

Since we're talking about the law, this is going to sound a little boring at first, but bear with me.

A trademark or service mark is commonly a word, symbol, design, or combination of such, which (a) identifies the source of goods or services and (b) distinguishes such from the goods or services of others.

Probably the best way to explain that sentence is through some examples. For instance, the word "NIKE" or Nike's so-called "SWOOSH" symbol denote that a particular pair of shoes, item of clothing, or other good(s) came from Nike while also distinguishing those goods from Nike's competitors.

Although trademarks and service marks are often words or symbols, a trademark or service mark can actually be a color, a sound, a smell, or almost anything else for that matter.

How Can You Protect A Company Name?

In the United States, we have a so-called "federal" system, in which the federal government has only those limited powers that are explicitly set forth in, or enabled by, the U.S. Constitution. Because the U.S. Constitution does not contain a "trademark" clause that would allow the federal government to expressly regulate trademarks, the federal government's power to regulate trademarks is made possible by the "Commerce Clause" or "Interstate Commerce Clause," which allows the federal government to "[t]o regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes."

Generally, in order for a mark to be registrable in the Principal Register, the mark must not be likely to cause confusion and must also be distinctive.

What Are The Benefits of Federal Registration?

Federal registration permits a trademark or service mark owner a number of exclusive rights, including:

  • The right to use the registered mark nationwide;
  • The right to file for an injunction to stop the unauthorized use of a trademark;
  • The right to file a trademark or service mark infringement claim for money damages;

In addition, once a mark has been registered for five (5) years, the exclusive right to use the mark has been conclusively established and cannot be contested.

So, just what are some of the steps involved in federal trademark registration?

1. Select Mark

Federal law places restrictions upon what types of trademarks can be federally registered so as to receive federal trademark protection.

In order be registered on the United States Patent & Trademark Office's ("USPTO") Principal Register, which provides substantially more protection than the Supplemental Register without first achieving secondary meaning or acquired distinctiveness, trademarks must be distinctive and cannot be:

  1. merely descriptive;
  2. misdescriptive;
  3. primarily merely a surname;
  4. primarily geographically descriptive;
  5. geographically misdescriptive; or
  6. likely to cause confusion among the public.

In addition, trademarks cannot "consist of or be comprised of "immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute..." 15 U.S.C. § 1052(a).

2. Select Mark Format

A trademark or service mark can be represented using the following three (3) mark formats:

  1. A standard character mark;
  2. A stylized/design mark; or
  3. A sound mark.

A standard mark consists only of unstylized characters. For example, the word “ACME”.

A stylized mark contains styled characters. For example, the word “ACME” in a particular font.

A design mark contains drawings of words, representations of symbols, etc. One of the most famous design mark is the Nike “SWOOSH”.

A sound mark consists of a particular sound, such as the NBC “CHIMES” or MGM “LION”.

3. Select Class

The USPTO registers trademarks/service marks using a class system consisting 45 international classes (prior to 1973, the USPTO used its own class system).

In theory and depending upon the similarity of the goods and services involved, the same trademark can be registered by different owners in different classes.

4. Describe Goods or Services

A trademark application must include a description of the actual goods or services associated with the trademark. 

The USPTO publishes a list of acceptable list of descriptions &mdash the Acceptable Identification of Goods and Services Manual — to facilitate the trademark application and registration process.

5. Perform Clearance Search

In order to avoid confusion, which is a basis by which the USPTO can reject a trademark, trademark applicants perform either a "knock-out" or comprehensive trademark search.

Although there is no set formula for a knock-out search, such searches are generally limited to queries of the USPTO's TESS database, queries via search engines, and queries of the WHOIS database.

In stark contrast, a comprehensive trademark search often includes common law, state law, ad regulatory sources. In addition, comprehensive trademark searches are often accompanied by an opinion letter from an attorney as to trademark-ability.

6. Select Filing Basis

One peculiarity of the U.S. Federal System is that a trademark must first be "used in interstate commerce" before it can be registered on the USPTO's Principal Register. That is not to say that trademark applications cannot be filed without first using a trademark in commerce; rather, such an application is called an "intent to use" trademark application and the mark must be used in commerce within a certain time period after the trademark has been examined and approved for registration.

The USPTO has published the following interactive timelines on it website, which provide significant detail about what a mark owner can expect during and from the registration process:

It's important to note that neither timeline covers every application scenario.

Federal Trademark Checklist

A Checklist by Steven W. Cook, Esq.

Click Here to Get Free Checklist

7. File Trademark Application

Applications for domestic trademarks originating in the United States are filed with the United States Patent & Trademark Office. The fee for electronic filing, which is less than for paper filing, is currently $325 per trademark class.

This brief overview of Arizona and federal trademark law is by no means comprehensive and is not legal advice. Always seek the advice of a competent professional when making important financial and legal decisions.

Arizona Trademark AttorneySteve Cook is an Arizona trademark attorney at Cook & Cook. Although his office is located in Mesa, Arizona, he represents clients throughout the Phoenix, Arizona Metropolitan area including the following east valley cities: Scottsdale, Paradise Valley, Tempe, Chandler, & Gilbert.

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