If you have a distinctive name, logo, or slogan and you sell goods or services across state lines or over the internet, chances are that you should be thinking about registering your trademark with the United States Patent and Trademark Office. Why you might ask? By registering your trademark you impart others with constructive notice of your trademark claim and rights, and this gives you stronger legal protections if a person were to infringe on your trademark by using the same or confusingly similar mark in connection with similar goods or services. By registering your mark you not only have proof that the other party was on notice, but you can also have a right to statutory damages and potentially attorney fees if you have to bring an action against an infringer who fails to stop the infringement after demand.
What type or mark can be protected? You can register a logo, name, slogan, or combination thereof. Trademark law provides the greatest protection to the marks that are distinctive and out of the ordinary. Typically, fanciful, arbitrary or suggestive marks are more distinctive and afforded protection, while merely descriptive or generic marks are not permitted registration. Examples of distinctive marks include unique logos such as the Nike® swoosh and made up words such as Reebok. Fanciful marks are words that are made up and would have no independent meaning if not for the product or service for which it represents, such as the term “Google®.” Arbitrary marks are words that are surprising or unexpected for the type of good or services provided, such as Apple® for computers. And, suggestive marks allude to some quality or characteristic of the good or services, such as Jaguar® for a car company.
Fanciful trademarks can become so popular that they can become viewed by the public as generic because they are viewed as representing an entire class of goods and services rather than the individual brand. An example is “Kleenex” which is a brand of tissue paper, but often referred to whenever someone asks for a tissue. Once the consuming public no longer deems your mark to be fanciful but rather something that describes a whole class of goods or services, it could lose its protection. So, it is important to protect your fanciful mark.
Words that are generic or ordinary receive less protection, and may not even be capable of registration, unless they have developed public recognition due to their long use in the market place. These type of marks are said to have acquired a secondary meaning. An example of a common word that has acquired a secondary meaning would be McDonalds. This is the last name of a person, but has acquired such wide use that it is identified with the fast-food restaurant throughout the world.
Generic or descriptive marks are common words that describe the product itself and cannot be protected by trademark laws. Descriptive words generally describe the type of goods or services provided and will not generally be approved for registration. For example, the name “The Grocery Store” will not likely be approved for registration for a business selling groceries. On the other hand “Kroger®” and “Giant Eagle®” are grocery store names that have been successfully registered because they are fanciful and arbitrary respectively.
It is important that you contact a trademark attorney (such as the author) before you invest a lot of money in a name, logo, or slogan so that it can be determined if your mark is already in use and can be registered and protected. Failure to do so can cost thousands of dollars in legal fees and potential rebranding should a dispute arise.
Please contact Christian Donovan, Esq. (614) 229-4476 | CDonovan@LNLattorneys.com if you would like to discuss trademarking your name, logo, or slogan.