The United States Patent and Trademark Office (known as the Patent Office or USPTO) indicates that a trademark (also called mark) is a “word, phrase, symbol, or design, or a combination of these elements, that identifies and distinguishes the source of one party’s goods from those of others…” Examples of famous trademarks include the large, yellow McDonald’s “M,” Apple’s bitten apple design, and the infamous Nike swoosh. The purpose of these marks: Make you remember the company’s brand—something marketers call brand awareness. And it works. When you walk down the street and see a swoosh on a billboard, Nike instantly comes to mind. The same goes with spotting a partially bitten apple symbol on the front of a laptop. Or two, connected yellow arches on a sign. You may even think of “I’m lovin it,” which McDonald’s trademarked as well.
These aren’t the only trademarks. In fact, hundreds of thousands of marks are registered with the USPTO each quarter of the fiscal year. Currently, 2017 Q2 boasts a whopping 275,675 trademark applications and 170,689 registered trademarks. As the numbers indicate, applying and registering a trademark is a fairly standard business practice.
If you’re considering trademarking an aspect of your business (i.e. word, phrase, symbol, design) or simply want to know more about the ins and outs of trademarks, read on. From this article, you’ll learn:
- The difference between a trademark, trade name, service marks, certified marks, and collective marks
- What makes a trademark a trademark
- The 3 sacred rules that many don’t know (but should!) about trademarks (i.e. no one owns the word/phrase/symbol/design…)
Differences in the Intellectual Property Sphere
Here are the most common types of intellectual property marks:
Unlike trademarks, which protect the product, a tradename protects the business name. It can become confusing considering that products don’t have to be tangible goods but versions of the tradename. Take the media company, Entrepreneur. “Entrepreneur Media” is the business name (and tradename). “Entrepreneur” is its trademark. So, in some respects, you can conduct a business name search to see what business names (hence tradenames) are taken. Which may give you an idea if a business also has trademarked name-related words—in this example, “Entrepreneur.”
Service marks, on the other hand, protect the business’ service. (Remember, trademarks protect the business’ products?) Generally, service marks are slogans that describe the business’ services. Think of United’s service mark, “Fly the Friendly Skies”—it tells consumers they’re in the airline business.
Certified marks act more as a stamp of approval, informing consumers the product has passed the manufacturing standards laid out by a third-party group. Some certified marks you’ll probably recognize include USDA Organic and Underwriters Laboratories marks.
Collective marks identify and protect an association or group. If you’ve purchased Girl Scout cookies, you’ve seen the well-known “Girl Scouts” collective mark. Or, if you belong to the American Automobile Association (AAA), you’ll have a card with the collective mark, three red As inside a circle, located on the top left corner.
What makes a trademark a trademark
Aside from its definition, there are two qualities that make a trademark a trademark: distinctiveness and the “first dibs” rule.
Level of Distinctiveness
How distinctive is the trademark? Meaning, what makes the mark unique? Essentially, the more distinctive your mark is, the stronger the protection. For instance, the generic trademark, Aspirin, isn’t very distinct. So, it has the lowest level of protection. However, Starbucks’ logo, the mermaid design against a green background, is very distinct (it’s a fanciful trademark), which gives it a higher level of protection.
Surprisingly, trademarks don’t have to start out as distinctive; they can gain it over time. A famous example is the brown color of the UPS uniforms (now a trademarked color). In the early years (1929 to be exact), the all-brown uniforms weren’t trademarked. But over time, they gained trademark status, as there was less customer confusion—in other words, people knew that someone dressed in a brown short-sleeve shirt and shorts worked for UPS.
“First Dibs Rule”
If you do have a distinctive product, are you the first to use it? Otherwise known as the “first dibs rule.” This is where a trademark search comes in handy, as it lists the date the mark was first registered. (However, this may not be enough, as Common Law protects the originator even if he or she didn’t register the mark with USPTO.) Nonetheless, you don’t have to be the originator; you just have to be the first in your market (industry and geographical circle).
Key things to remember about trademarks
There are three sacred rules that most people don’t know (but should) about trademarks.
1. You own the trademark, not the word/phrase/symbol/design
If your application is approved, you now own the right to use said insert-word/phrase/symbol/design for commercial purposes. But know that, if it’s for a noncommercial purpose, others can still use it. Remember the “I’m lovin it” slogan McDonald’s trademarked? If companies did own the word/phrase/symbol/design, McDonald’s could technically sue you if you just so happen ate a delicious chocolate chip cookie, and said to a friend, “I’m lovin it” without permission from the fast food chain.
2. You must file the proper documents on time
Every 10 years after the registration (or renewal) date, you must file a Declaration of Use (or Excusable Nonuse) between year 5 and 6. If you’re renewing the mark, an Application for Renewal needs to be filed between year 9 and 10. Submitting these documents on time is incredibly important. How so? If late, the registration is cancelled, and the mark expires with no possibility for revival or reinstatement. (Know that Common Law still protects your mark.)
3. You do your own policing
The USPTO doesn’t monitor trademark infringement. That said, do your own police work. Should you identify trademark infringement, a simple (non-harassment) cease and desist letter should work in many cases.
For more information about trademarks and conducting a business name search, visit Sec States. Use this database for easy navigation to any state’s secretary of state website.