What is a “ Trademark” and what is it used for

Registering a trademark can be a relatively complicated process, but if done correctly, it can represent a valuable asset for a company.

It is very important to identify and understand the factors that can influence the strength or weakness of a trademark, in order to select the most suitable one and avoid conflicts with existing trademarks that can lead to complicated and costly legal proceedings.

What is a Trademark and what is it used for

According to the United States Patent and Trademark Office (USPTO), an agency of the U.S. Department of Commerce, a Trademark is “any word, name, symbol, or device that identifies and distinguishes the source of one party’s goods from the goods of others.”

There is also a Service Mark, which is similar to a Registered Trademark, except that it is aimed at services, rather than products. In this article, we will use the term "Trademark" interchangeably.

What is the difference between a Trademark, Copyrights an a Patent?

Patents, copyrights, and trademarks protect different types of intellectual property. A trademark typically protects names and logos used on products and services. Copyright protects an artistic or literary work, and a patent protects an invention.

An illustrative example of the difference between these terms would be someone who invents a new type of electronic device. They could apply for a patent to protect the product itself. They would then apply to register a trademark to protect the product's brand name. And they could register a copyright for a television commercial they use to market the product.

What are the differences between domain names, trade names, and trademarks?

A domain is part of a web address that connects to the Internet Protocol address (IP address) of a particular website.

Domain registration is done through a reputable company such as Google, Namecheap, and others. However, domain name registration does not grant any rights to use the trademark.

Indeed, even if you have a domain name registered with any of these companies, you may be required to return it if it infringes someone's trademark rights.

Unlike a registered trademark, the use of a domain name is only part of a web address and does not qualify as a source indicating the use of a trademark.

However, its prominent use, other than the web address, could qualify as the use of a trademark. Likewise, the use of a trade name does not necessarily qualify as the use of a trademark.

In Florida and some other states, when registering a business, you must select a name. If no other business has applied for that name and the other legal requirements are met, the state will issue a certificate authorizing you to conduct business under that name.

However, this authorization does not grant any trademark rights, and other parties may prevent the use of that trade name if they believe there is a likelihood of confusion with their trademark.

What you should keep in mind when selecting a brand

Selecting a trademark is the first step in the registration process. This selection must be made very carefully, as not all trademarks can be registered with the USPTO. Not all trademarks can be legally protected. Some trademarks lack a legal basis for a claim that would prohibit others from using a similar mark.

Before selecting a trademark, you should evaluate whether you can register it and how difficult it will be to protect it. Remember that the USPTO only registers trademarks, and the brand owner is responsible for defending them.

These are some factors to consider when selecting a trademark:

Possibility of confusion with another Trademark

One of the most common reasons for rejecting an application is the possibility of confusion with other trademarks already registered or pending registration. This may occur either because the trademark is similar, or because the goods or services of both parties are related in a way that consumers might think they come from the same source.

Generally, similar trademarks can coexist as long as there is no likelihood of confusion, provided their goods or services are unrelated.

It is important to determine whether there is a likelihood of confusion before applying to register a trademark with the USPTO. Remember that the application fee is non-refundable.

This determination can be made through a thorough search as will be discussed later.

Similarity between Trademarks

Trademarks don't necessarily have to be identical. When theysound the same, are visually similar, have the same meaning (even in translation), or generate the same commercial impression in the minds of consumers, they can be considered confusingly similar.

Similarity of products or  services

Even though two trademarks may be confusingly similar, confusion only exists if the goods or services connected to the marks are de facto related.

To establish a relationship between the goods or services, they must not be identical. It is sufficient that they are related in such a way that the consumer could mistakenly assume they come from the same source.

Even though the products or services may be very different, the important thing is that there is no possibility of consumer confusion about their origin.

Strong and Weak Trademarks

Even if a trademark cannot be confused with another pre-existing trademark, it is advisable to select a trademark that is considered "strong" in terms of protection, to facilitate the prevention of its use by a third party.

Some trademarks that are easier to protect are considered “strong” trademarks. On the other hand, if a trademark is very descriptive, and others already use it to describe their products or services, it is considered a “weak” trademark, making it difficult and expensive to protect.

It is advisable to avoid weak trademarks, as they do not have the same legal protection as strong trademarks.

Generally, trademarks fall into one of four categories: fanciful or arbitrary, suggestive, descriptive, or generic.

The category to which your trademark belongs will significantly impact both the possibility of registering it and the possibility of legally protecting it.

Fantasy or arbitrary trademarks are easier to protect because they are inherently distinctive. They are invented words with no known meaning and do not appear in dictionaries.

Fanciful trademarks are words that have a known meaning but no association or relationship with the protected goods or services.

Both fanciful and arbitrary trademarks are easier to register than descriptive trademarks. Because these types of trademarks are more creative and unusual, they are less likely to be used by others.

Descriptive marks are words or designs that describe goods or services and are therefore more difficult to protect and are considered "weak" marks.

If the USPTO determines that a mark is "merely descriptive," then it is not registrable or subject to protection unless it acquires differentiation, generally through commercial use for a minimum period of five years

Descriptive marks are considered “weak” until they have acquired some differentiation.

They are commonly selected in the belief that they reduce the need for advertising and consumer education, as consumers can easily identify the products or services offered, but they can be very difficult to defend.

Generic trademarks are considered the weakest and cannot be considered trademarks in the legal sense. They cannot be registered or protected by third parties. As generic words commonly used to describe products or services, everyone has the right to use these terms to refer to them, and they cannot be legally protected.

How to Conduct a Trademark Search

It's very important to conduct a prior trademark search to identify potential conflicts or confusion with other registered or pending trademarks. A proper trademark search can avoid the expense of applying for a trademark that has previously acquired rights.

The USPTO offers a free online search service available 24 hours a day, 7 days a week through http://www.uspto.gov/trademarks 

On the Trademark Electronic Search System - TESS  help page, you can find information and sample strategies for searching the USPTO database to prevent application rejection due to potential confusion or the existence of an already registered trademark.

It is important to understand that any search conducted through TESS is limited to the USPTO's database of federal trademark applications and registrations, and does not include marks that may have trademark rights without federal registration.

This type of right, known as "Common Law," is based solely on the commercial use of the trademark within a particular geographic area. These rights may be legally superior to those of trademark registration, provided that the use of the trademark under this law predates the use that gives rise to the registration.

This conflict can be avoided by searching the internet for websites and articles that reference similar trademarks related to your products or services.

It is also advisable to search trademark registration databases and regional business name registries. This search can be complicated, so it is advisable to consider hiring a trademark attorney to assist you with this process.

Summary

Registering a trademark can be a relatively complicated process, but if done correctly, it can represent a valuable asset for a company.

It's very important to identify and understand the factors that can influence the strength or weakness of a trademark, so you can select the most suitable one and avoid conflicts with existing trademarks that can lead to complicated and costly legal proceedings.

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