While Trademark law is vast and nuanced, its basic precepts are actually quite simple and straightforward.
The fundamental principal of trademark law is that we, as a society, want to reward those who have managed to build a successful and ubiquitous brand while stopping others from trading off of that brand’s good will. For example, the Cartier Corporation has developed an incredibly powerful and well-known brand name, or trademark, in the jewelry industry. The very word, “Cartier”, means something to the average consumer and therefore, trademark law would prevent a hypothetical new startup company from developing a line of earrings under the brand name, “Cartier”. Why? Because it simply would not be fair for this new company to piggy-back off of all of the hard work and financial output that Cartier has invested over the years by tricking consumers into believing that the Earrings are from THE Cartier corporation. So, how can a company develop a strong a protectable Trademark, like, Cartier? Follow the below Trademark Registration Guidelines and Strategies to get your Trademark
Select a Distinct Brand Name
A central tenent of trademark jurisprudence is that the more distinct the name of the trademark is relative to the goods sold under the banner of the trademark, the more likely the name can obtain trademark protection. For example, a company that sells Air Conditioning units cannot trademark their company, COOL AC, because such a name merely describes the product that this company sells. Because it is not sufficiently distinct, it is not trademarkable. Conversely, if this company were to call itself an entirely made up name like, “ALBRO”, they would be able to obtain a trademark protection because the name is entirely independent of the goods that this company sells. Want a strong trademark? Pick a creative name that can stand apart from the goods/services you intend on selling under the name.
Don’t Tread on Another’s Trademark
Imagine for the moment that the hypothetical jewelry company referenced earlier in this article decided to call itself, “KARTTIER”, rather than “Cartier”. While you might think that because KARTTIER is spelled differently than CARTIER, there would not be the problem of trademark infringement, you would be mistaken. Remember, trademark law is chiefly concerned with preventing a Likelihood of Confusion between an existing trademark and the new, prospective trademark. Because KARTTIER and CARTIER are fundamentally indistinguishable, at least in terms of their sound and commercial impression, merely changing the spelling of the word cannot obviate the problem of consumer confusion. Therefore, it is critical that your trademark is not only different from an existing trademark but also different in such a way as to avoid Likelihood of Confusion between the two marks.
File a Trademark Application Before You Have Started Selling Your Good/Service
While a name/logo/slogan can only achieve full trademark status once the mark has been used in conjunction with the sale of a good or service, it is nevertheless prudent to file the trademark application with the United States Patent and Trademark Office (USPTO) under a 1(b) Intent-to-Use designation BEFORE any sales have been made. Why? Because the trademark applicant obtains the preliminary protection of an early priority date, from the date of the filing. Remember, the goal is to increase your protections from the moment you introduce your brand name into the Market – if you have not yet made any sales, the only way to do this is to file a trademark application with the USPTO.
Be Forward Thinking When Submitting Your Trademark Application
When submitting a trademark application with the USPTO, the applicant is forced to designate a specific set of goods and/or services which are to be covered under the application. To do this, the applicant must provide both a description of the goods and/or services AND select a “Class” within which the goods/services fall into. For example, a company selling Golf clubs would list in the application, “Golf Clubs” and designate in the application Class 028. Here is where you need to pay attention; the USPTO does not allow an applicant to update the trademark application at a later point with a new set of goods so if, for example, this Golf company wanted to also protect their mark vis-à-vis the sale of Golf shoes, this company would need to file an entirely new trademark application! Therefore, it is critical for startups to anticipate what they intend on selling in the future and proactively include those future items in present-day trademark applications.
Ultimately, trademark law is conceptually simple but mechanically complex. It is critical that emerging startups develop a brand identity that is novel, unique, and protectable.