Five Common Mistakes to Avoid In Choosing a Trademark

Posted by on Jun 22, 2020 in General |

You possess selected your new trademark, service mark or business company name and have paid marketing and advertising professionals handsomely for their services. You’ve also spent money for air time, print news flash, catalogs and brochures to advertise the benefits of your new products and happily displayed your trademark. When you finally speak to a trademark legal practitioner to protect your trademark rights, you receive bad news: your trademark is not protectable or enforceable and your competitors can without restraint use your mark to describe and sell their products.

The “Rooibos” brand case illustrates why your trademark attorney should be active in the early stages of trademark or business name selection. “Rooibos” was used on tea products and was registered with the Ough. S. Patent and Trademark Office (“PTO”) for many years and even was purchased by an unsuspecting business. After numerous time consuming court battles in an attempt to protect and enforce the hallmark, the registration was canceled because “Rooibos” is the popular name for the plant used to make the tea products. To diminish the possibility of making such a costly mistake, we suggest that, anyway, these guidelines be followed:

1 . Consult With a Trademark Attorney.
It is very important that you consult with a trademark attorney with extensive trademark registration experience in the early stages of the process. It’s not necassary to assume that an attorney is experienced in trademark law. One thing you can do is to seek them up on the to make sure that they have previously registered countless trademarks.

. Strong Trademark.
The trademark attorney will be able to aid you navigate through the trademark strength spectrum to select a strong, protectable trademark. It is best to select a trademark from categories (a) with (c) listed below, with (a) and (b) being favored to register and protect.

(a) Fanciful Trademark – Tough. A fanciful trademark is a made up word that only functions in the form of trademark or service mark. Pepsi® and Xerox® for you to exist in any language before they were chosen as logos for drinks and copy machines.

(b) Arbitrary Brand – Strong. An arbitrary trademark is a word which will exists but has no meaning when used on the product again. “Apple, ” when used on computers is a strong respectable and reputational because it doesn’t describe a quality or characteristic of the desktop computer. More information americanbar.org

(c) Suggestive Trademark – Strong. A suggestive signature is a word that, when applied to the products or products and services, requires imagination, thought, or perception to reach a ending regarding the nature of those goods or services. Greyhound® for bus assistance is a suggestive trademark because a customer has to use visualization to conclude that the bus travels as fast as a greyhound dog.

(d) Descriptive Trademark – Not Strong. Some descriptive trademark immediately conveys information regarding an ingredient, superior, characteristic, function, feature, purpose or use of the product or service. When is tempting to select a descriptive mark because of the lessen in recognition of the goods or services provided, they are only protectable if used and advertised over a period of time so that users associate the mark with the good or service which it is used. Honey-Baked® for hams and No Spot® for one car wash system were initially deemed descriptive within the products and services.

(e) Generic – Weak and Unprotectable. Common names terms or common words for the products or services cannot work as a trademark because it would prevent others from fairly using the common name for the product or service that they make. Top Glue, after a costly court battle, was deemed common names when used on a strong, rapid setting glue and not qualified for trademark protection.

3. Trademark Search – No Inconsistant Trademarks.
Once you have selected a few strong trademark candidates, the next task is to clear the trademarks by searching registration records to verify there are no previous trademark right holders that would stop your use. There are many traps for the unwary, for example , a already registered trademark does not have to be identical to your proposed unique to prevent your use. Blue Shield® and Red Protection, for example , have been held to be confusingly similar and the mandement ordered that Red Shield not be used for insurance offerings.

4. Domain Name Availability.
In today’s technological world, you have to make positive the. com extension is available for your trademark. Don’t use hyphens in your domain name because that will send your traffic together with customers to another site. Also, don’t misspell common key phrases because that will unintentionally direct your traffic and potential customers to another site. You should also register the. net and. org extensions for your trademark to reduce the possibility of cybersquatters registering your company domain name with those extensions.
5. Register Your Hallmark.
You need to properly and quickly register your trademark when using the PTO in order to receive the most protection for your investment so to develop the valuable asset that you have just added to your corporation. Your experienced trademark attorney will be able to properly register your company’s trademarks and avoid many common pitfalls in the application technique.

Your trademark or service mark is a valuable pc software and establishes goodwill with your customers. It is critical that you ensure that the trademark you select is one that you can register and preserve.