What sets your business's products or services apart from those of your competitors?
Many businesses provide responses such as "quality" or "service," and these aspects are crucial in successfully distinguishing your product or service. However, trademark protection empowers you to craft a distinctive brand narrative that conveys the worth of your offerings.
For additional insights on the significance of trademark protection, reach out to an experienced Orange County Trademark Lawyer today. The Cohen IP team possesses the commitment and experience necessary to make sure your trademark protects your brand.
What is a Trademark?
Your company's trademark is intellectual property that points to the source of a service or product.
Businesses large and small, utilize trademarks to differentiate their products or services from those of their competitors. Consumers depend on trademarks to recognize that the product or service they are receiving originates from a reliable source.
As per the United States Patent and Trademark Office (USPTO), a trademark can be described as "any word, phrase, symbol, design, or a combination of these elements that identifies your goods or services." A registered trademark:
- Identifies your business as the originator of your goods or services.
- Provides legal protection for your branding efforts, enabling you to combat counterfeiting or fraudulent activities.
Some limited rights to a trademark automatically come into effect as soon as you begin using it to identify your business's products or services. These rights are also applicable solely to the geographical areas where you actually offer your products or services.
When an Orange County trademark attorney registers a company's trademark, it not only expands the rights, it also expands the geographic area where those rights apply.
A registered trademark enjoys nationwide protection within the United States, regardless of whether your goods or services are available in all markets.
It's essential to understand that registering a trademark does not grant full ownership of the words or images used in the trademark. Instead, trademark registrations pertain to specific uses of the registered items. When submitting a trademark registration application, it must precisely specify the goods or services to which the mark applies.
Furthermore, a single application can seek protection for trademarks across multiple categories of goods or services. For example, if your business plans to introduce a range of handheld video game devices, a social media platform, and wireless headphones, all under a single name and logo, your application can encompass all three areas for trademark registration.
Adhering to the USPTO's criteria for a strong trademark can help ensure that your trademark is adequately protected in the appropriate contexts.
What Kind of Items Require a Trademark?
Trademark protection encompasses elements commonly linked to brands, such as a product's title, a catchphrase, and the hues, configurations, or typefaces employed in its logos and packaging. For instance, the distinctive contour of the arches in McDonald's logo, the precise shade of blue affiliated with Wal-Mart's branding, and the unique font utilized by Coca-Cola to display its product name are all instances of elements that can receive safeguarding through a registered trademark.
Trademarks play a pivotal role in branding, but it's important to note that a trademark and a brand are not entirely interchangeable terms. A "brand" represents a marketing strategy or concept aimed at evoking specific emotions and reputation signals within your target audience. Trademarks, including logos, colors, fonts, slogans, and sounds, are instruments employed to assist the overarching brand in achieving its objective of eliciting a particular response from its audience.
Any word, phrase, design, or any combination of these 一 can be registered for trademark protection if it:
Identifies your goods or services,
Distinguishes them from the goods or services of others, and
Communicates the sources of your goods or services.
Trademarks can extend protection to various aspects, even those not directly linked to branding. For instance, iconic sounds such as the Microsoft Windows startup chime can be eligible for trademark registration.
It's important to note that obtaining a trademark registration doesn't inherently enhance your brand's strength. However, it does serve as a means to safeguard the brand your business has cultivated.
How an Orange County trademark lawyer from Cohen IP can help your company create a strong trademark
The USPTO advises prioritizing the components of a robust trademark when seeking trademark protection. A strong trademark possesses innate distinctiveness, making it instantly recognizable and clearly identifying a product or service as your own with just a cursory glance.
When striving to establish a strong trademark, the USPTO suggests concentrating on the following criteria:
Fanciful trademarks employ coined terms that have meaning solely in connection with the product or service they represent. Prominent instances include "Kodak" for photographic film, "Exxon" for petroleum, and "Pepsi" for carbonated beverages. These trademarks leave no room for confusion with products or services from other businesses, as the name itself uniquely identifies a particular brand.
An arbitrary trademark takes an existing word but applies it to a product or service that deviates from the word's usual context. For instance, using "Apple" for a fruit stand wouldn't be considered arbitrary since apples are fruits. However, using "Apple" for computers is considered arbitrary because computers have no connection to the context of fruit. This shift in context is what makes an arbitrary trademark distinctive and attention-grabbing.
A suggestive trademark hints at a characteristic of the product or service without explicitly stating that characteristic. An instance of a suggestive trademark is "Banana Boat" sunscreen. The name implies a tropical escape, which could be linked to using the sunscreen during a vacation.
More Trademark Considerations
In addition to these considerations, the USPTO advises evaluating whether a trademark could potentially convey an offensive or undesirable meaning in other cultures, particularly when the product or service is intended for these markets.
The USPTO also discourages the use of descriptive or generic trademarks. A descriptive trademark characterizes a feature of a business's products or services but does not effectively differentiate their origin. For example, labeling a potato chip brand as "Crunchy" or a social media platform as "Message Friends" falls into this category.
A generic trademark merely constitutes the name of the underlying product or service and is ineligible for registration, as it represents the common, everyday terminology for that product or service. Such trademarks do not set your product or service apart from competitors. For instance, naming a coffee shop "Coffee Shop" or a sandal brand "Sandals" would not qualify for trademark registration. (However, naming your sandal line "Coffee Shop" or your coffee shop "Sandals" might be eligible, as these names would be arbitrary.)
Calling a coffee shop “Coffee Shop” or a brand of sandals “Sandals” would likely not qualify for trademark registration.
What Other Benefits Do You Get by Registering a Trademark?
There are multiple benefits to registering a trademark such as:
Registration in the USPTO database.
The database is publicly searchable, allowing others to see that you own the trademark as applied to certain goods or services.
Use of the federal trademark registration symbol (®)
This tells customers and competitors that your brand is registered and protected.
The right to bring a lawsuit in federal court to protect your interest in the trademark.
Access to the legal presumption that you own the trademark
Also, the presumption you have the right to use it. To demonstrate these facts in court, you only need to provide a copy of your registration certificate, rather than build a case based on your use of the trademark.
The opportunity to register your trademark with Customs and Border Patrol (CBP)
This can work to stop the importation of counterfeit or infringing items.
Faster registration of the trademark in some non-US countries
These countries will not accept your US trademark registration as evidence of ownership.
State Trademark Registration
Trademarks can also be registered with state governments within the United States. Nevertheless, these state-level registrations offer protection solely within the specific state where the registration is granted.
It's worth noting that not all U.S. states maintain trademark registration databases. Consequently, even if you do register your trademark at the state level, it may not be easily searchable by others, as not all states provide this service.
What If My Creation or Brand Does Not Fall Under Trademark Law. Can I Still Protect It?
Trademarks frequently integrate artistic design components. Shapes, typefaces, hues, auditory elements, and catchphrases are all thoughtfully selected to communicate a specific message.
Since trademarks share expressive and design elements, their creation often overlaps with other forms of intellectual property, including copyright and patent protection. However, trademarks are registered and protected for a very specific purpose: To distinguish your company's goods and services in the marketplace.
If a creative or expressive item or design is not intended for this specific purpose, it might not meet the criteria for trademark protection. Nevertheless, alternative forms of intellectual property protection may be accessible.
Certain distinctive design elements also become integral to a product or service's trademarks; a prime illustration is the distinctive shape of a Coca-Cola bottle.
Copyright covers creative or expressive works “fixed in a tangible medium of expression.”
Copyright protection is established when a work is initially recorded in a tangible form. Nevertheless, opting to register a copyright with the US Copyright Office opens up access to supplementary safeguards.
On certain occasions, registering the copyright for a trademark-related element (such as a logo rich in graphics or a unique startup sound) can extend protection to the creation itself, extending beyond its application in commercial contexts.
Patents protect many aspects of inventions.
Patents encompass both the functional aspects of an invention and specific design elements integrated into its production. For instance, a design patent could safeguard the distinct contour of a food container or the specific surface finish employed in the manufacturing of a musical instrument.
Talk to an Experienced Orange County Intellectual Property and Trademark Attorney Today
The experienced Orange County trademark attorneys at CohenIP have over 20 years of experience handling trademark-related matters.
The committed legal team at Cohen IP has handled and overseen more than 1,000 trademarks, addressing various matters before the United States Patent and Trademark Office.
If you require assistance with your intellectual property inquiries or require trademark-related support, don't hesitate to reach out to the Cohen IP team today. We offer strategic legal counsel and specialized trademark services.
Our Trademark Services
- Trademark Applications & Registration
- Trademark Searches Clearance
- Office Action Responses
- Statement of Use Filings
- Renewals Section 8 & 9
- Trademark Oppositions Proceedings
- Trademark Cancellation Proceedings
- Incontestability Section 15
- Letter of Protest
- Trademark Litigation
- Madrid Protocol Trademarks
- Madrid Protocol & EU Member Countries
- Foreign Trademark Filing Basis Section 44(D) & 44(E)
- Certification Trademark Applications