Understanding Trademarks

Have you ever wondered why the Prada can sell a pair of shoes for $1500.00? Are the shoes really worth such an obscene amount of money? Well, the reality is that these shoes are “worth” what people are willing to pay for them and the mere presence of the Prada name, or Trademark, on the shoe makes it worthy of a $1500.00 price tag. Trademarks are signatures and transmit a message of reputation when attached to a good or product. A trademark tells the consumer something about the product without the consumer having to actually know anything about the product. Is this a good quality shoe? Well, it has the Gucci name on it so it must be a high-end product. The trademark may be a word, symbol, phrase, or graphic design and if branded properly, distinguishes the given product from those of the company’s competitors.

When To Apply for a Trademark in the USPTO

Protect Your Brand at All Costs.

Ultimately, companies are built with the objective of selling them (or at least the potential to sell them). More than anything else, the essence of a company – the thing that is most valuable, is its intellectual property. The company name, logo and branding assets that consumers recognize and relate to when deciding to purchase a company’s products or services. If you are serious about the future of your business, you must protect your branding assets with trademarks.

Can Anything be Trademarked?

Trademarks Must be Sufficiently Distinct

Names/Logos are eligible for obtaining trademark rights according to their uniqueness – the more distinct the mark, the more trademarkable and the less distinct, the less trademarkable. Consider for the moment a Carpet company that wants to call itself, “Rugs.” Clearly, there is nothing distinct about this choice of brand name and instead, we (along with the USPTO) would likely classify this name as one that is “Generic” and therefore undeserving of trademark protection. When you’re starting out, please try to come up with a new and novel name that will make your company stand out.

Trademarks must be used “in commerce”

Remember, a trademark is a source identifier – it may be word, logo, slogan, and/or design that when attached to a good or service, enables a consumer to identify the company which produces the good/service. If you are not actually selling anything under your clever name or design, you do not actually have a trademark – you just have a clever name or design. To obtain trademark protection in the United States Patent and Trademark Office (USPTO), you must have made a significant number of sales of your product/service in Interstate-Commerce.

What if Someone Else is Already Using My Company Name?

Critically, trademarks are tethered to specific goods and services. The Apple Corporation, for example, cannot stop me from launching a shoe company called “Apple” because Apple Corporation’s rights to the trademark Apple are for computer-related services specifically. Therefore, if you find that your name is seemingly already taken, make sure the owner of the trademark is using it for a different set of goods than yours before you proceed.

trademark eligibility test

What can’t you trademark

When does the USPTO deny applications?

Applications are routinely rejected based on the “likelihood of confusion” standard. According to the USPTO, “likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source. Each application is decided on its own facts, and no strict mechanical test exists for determining the likelihood of confusion.” As you can see, there is no bright-line rule to follow. That’s why utilizing a top trademark lawyer experienced with the USPTO makes sense.

How long does it take?

From the time of submitting the trademark application, the applicant may expect to hear back from the USPTO within 3-6 months. Then, depending on whether or not the trademark was found to be an eligible trademark for registration or ineligible for registration, the process will take an additional number of months. Therefore, the total time for an application to be processed, from beginning to end, maybe anywhere from (nearly) one year to several years. However, it is critical to file the trademark application as soon as possible so as ot obtain the earliest possible filing date.

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