I have been working with The Cohen IP Law Group for over 16 years; they made registering all of our trademarks a breeze.
- David O.
What distinguishes your business’s offerings from your competitors’ offerings?
Many companies offer answers like “quality” or “service.” These elements are essential to helping your product or service stand out 一 and communicating them quickly and effectively to consumers is a must. Trademark protection allows you to shape a unique brand story that communicates the value of your offerings.
To learn more about the value of trademark protection, speak to an experienced Los Angeles Trademark attorney today. The team at Cohen IP has the dedication and experience you need to answer your trademark questions.
What is a Trademark?
A trademark is a form of intellectual property that identifies the source of a product or service.
Businesses use trademarks to distinguish their product or service from that of competitors. Consumers rely on trademarks to know that the product or service they’re getting is from the same reliable source.
Your trademark may be “any word, phrase, symbol, design, or a combination of these things that identifies your goods or services,” according to the United States Patent and Trademark Office (USPTO). A registered trademark:
- Identifies you as the source of your goods or services.
- Offers legal protection for your branding efforts, allowing you to fight counterfeiting or fraud.
Certain limited rights to a trademark exist as soon as you start using the trademark to identify your business’s goods or services. Your rights also apply only to the geographic locales in which you actually provide goods or services.
Registering a trademark expands both the rights associated with trademark ownership and the geographic area those rights cover.
A registered trademark receives protection throughout the United States, for example, even if you do not offer your goods or services in all markets.
Registering a trademark doesn’t provide total ownership of the words or images used in the trademark. Rather, trademark registrations focus on specific uses of the items registered. A registration application for a trademark must specifically identify the good or service to which the mark applies.
An application can seek protection for trademarks in more than one goods or services area. For instance, if your business seeks to launch a line of handheld video game devices, a social media site, and wireless headphones under a single name and logo, your application may identify all three areas for trademark registration.
Meeting the USPTO requirements for a strong trademark can ensure you protect your trademark in the appropriate settings.
What Kind of Items Require a Trademark?
Trademark protection applies to elements commonly associated with brands, like a product’s name, its slogan, and the colors, shapes, or fonts used in its logos and packaging. The unique shape of the arches in the McDonald’s logo, the specific shade of blue associated with WalMart’s branding, and the distinctive font Coca-Cola uses to print its product name, are all examples of items that can be protected under a registered trademark.
Trademarks play a key role in branding, but a trademark and a brand are not fully synonymous. A “brand” is a marketing plan or concept designed to generate specific feelings and reputation signals among your target audiences. Trademarks like logos, colors, fonts, slogans, and sounds are tools used to help the overall brand meet its goal of eliciting a particular reaction from an audience.
Any word, phrase, design, or any combination of these 一 can be registered for trademark protection if it:
Identifies your goods or services,
Distinguishes them from the goods or services of others, and
Communicates the sources of your goods or services.
Trademarks can also protect other features, even if they aren’t immediately associated with branding. Sounds like the well-known Microsoft Windows startup chime can be registered for trademark protection, for example.
Trademark registration won’t automatically create a stronger brand. But it will help your business protect the brand it has created.
Creating a Strong Trademark
The USPTO recommends focusing on the elements of a strong trademark when filing for trademark protection. A strong trademark is “inherently distinctive” 一 it immediately stands out, marking a good or service as yours at a glance.
In creating a strong trademark, the USPTO recommends focusing on the following factors:
Additional Trademark Considerations
In addition to these factors, the USPTO recommends checking whether a trademark might translate into an offensive or otherwise unwanted meaning in other cultures, especially if a good or service will be marketed in these cultures.
The USPTO recommends staying away from trademarks that are descriptive or generic. A descriptive trademark describes some aspect of a business’s goods or services, but it doesn’t actually distinguish their source. Examples might include naming a potato chip brand “Crunchy” or a social media site “Message Friends.”
A generic trademark is no more than the name of the underlying good or service. These trademarks cannot be registered, because they’re the ordinary, everyday terms for the good or service. They do not distinguish your good or service from competitors. For instance, calling a coffee shop “Coffee Shop” or a brand of sandals “Sandals” will not qualify for trademark registration. (Naming your sandal line “Coffee Shop” or your coffee shop “Sandals” might qualify, however, as these names would be arbitrary.)
Calling a coffee shop “Coffee Shop” or a brand of sandals “Sandals” will not qualify for trademark registration.
Why Register a Trademark?
The USPTO identifies several benefits to registering a trademark. These include:
Registration in the USPTO database.
The database is publicly searchable, allowing others to see that you own the trademark as applied to certain goods or services.
Use of the federal trademark registration symbol (®)
This helps you communicate to others that your trademark is registered.
Litigation
The right to bring a lawsuit in federal court to protect your interest in the trademark.
Access to the legal presumption that you own the trademark
Also, the presumption you have the right to use it. To demonstrate these facts in court, you only need to provide a copy of your registration certificate, rather than build a case based on your use of the trademark.
The opportunity to register your trademark with Customs and Border Patrol (CBP)
This can work to stop the importation of counterfeit or infringing items.
Faster registration of the trademark in some non-US countries
These countries will not accept your US trademark registration as evidence of ownership.
Trademark Registration with State Governments
Trademarks can also be registered with US state governments. However, these registrations provide protection only in the state that receives the registration.
Not all US states have trademark registration databases, either 一 so even if you register, others may not be able to look up that registration easily.
My Creation Doesn’t Seem to Fall Under Trademark Law. Can I Still Protect It?
Trademarks often incorporate creative design elements. Shapes, fonts, colors, sounds, and slogans are all carefully chosen to convey a particular message.
Because trademarks share expressive elements and design elements, their creation often overlaps with other forms of intellectual property, including copyright and patent protection. However, trademarks are registered and protected for a specific purpose: To distinguish goods and services in commerce.
If a creative or expressive item or design is not intended for this purpose, it may not qualify for trademark protection. Other forms of intellectual property protection may be available, however.
Some unique design elements also become part of the trademarks of a product or service – the shape of a Coca-Cola bottle is one classic example.
Copyright covers creative or expressive works “fixed in a tangible medium of expression.”
Copyright protection attaches when the work is first fixed in a tangible medium. Registering a copyright with the US Copyright Office, however, provides access to additional protections.
In some cases, registering the copyright in a trademark item (like a graphics-heavy logo or a distinctive startup sound) can provide protection for the creation itself, outside its use in commerce.
Patents protect many aspects of inventions.
Patents cover both the useful elements of an invention and certain design elements incorporated into the invention’s manufacture. A design patent may protect the unique shape of a food package or the particular finish used on a musical instrument, for example.
Speak to an Experienced Los Angeles, California Intellectual Property Attorney Today
The experienced Los Angeles trademark attorneys at CohenIP have over 20 years of experience handling trademark-related matters. The dedicated Cohen IP legal team has prosecuted and managed over 1,000 trademarks, facing a range of issues before the United States Patent and Trademark Office.
For help answering your intellectual property questions or handling trademarks, speak to the team at Cohen IP today. We provide strategic legal advice and focused trademark services.
Our Trademark Services
- Trademark Applications & Registration
- Trademark Searches Clearance
- Office Action Responses
- Statement of Use Filings
- Renewals Section 8 & 9
- Trademark Oppositions Proceedings
- Trademark Cancellation Proceedings
- Incontestability Section 15
- Letter of Protest
- Trademark Litigation
- Madrid Protocol Trademarks
- Madrid Protocol & EU Member Countries
- Foreign Trademark Filing Basis Section 44(D) & 44(E)
- Certification Trademark Applications
Specific Trademark Issues
- Trademark Infringement
- Common Law Trademarks
- Principal VS. Supplemental Register
- Anti-Cybersquatting & UDRP
- Clothing & Trademark Issues
- Cannabis Trademark Issues
- Trade Dress
- Trademark Fair Use Defense
- Trademark Branding
- Trademark Resources