Trademark Selection and Protection

Trademark selection and protection are two of the initial steps by which trademark attorneys safeguard their clients’ rights.

How important is a trademark?  Look no further than the Nike “Swoosh”.
That symbol is so distinctive that it appears alone (without the word Nike) on some of the company’s advertising for athletic shoes.  Other examples abound.

How important is a trademark attorney?  Did you know that “zipper” is – or at least once was – one of the many registered trademark names?  It was the brand name of a company’s unique fastening method.  What company would not want to be the seller of every “zipper” sold?

Sadly, that company did not have an attorney who used proper trademark selection and protection methods.  Today anyone who makes or sells a similar fastener calls it a zipper.

How to Choose a Trademark

Selecting the mark is a matter of understanding the range of distinctiveness that exists for words or symbols.  The range, in order, is:

• Generic
• Descriptive
• Suggestive
• Arbitrary or Fanciful

The first two are too general to be protected by a trademark.  The law will not stop another company from using them.  They both are terms that simply describe the product. (Under rare circumstances a descriptive mark may be legally protectable).  “Tutoring Center” would be hard to protect.

A suggestive mark is one that makes the consumer think about what the product is and a good trademark attorney can argue for protection in the court if necessary.  “Notebook” for a laptop computer might be an example.

The most distinctive marks are arbitrary or fanciful.  Arbitrary means there is no relationship between the product and its name.  This would include “Champion” spark plugs or “Rolex” watches.  Fanciful names are completely unique and generally unused words, like Kodak.

The double-sided coin aspect of a mark is that the more unique it sounds the harder it is to market at first.  Later, however it is all the more valuable and easier to protect.

Trademark Search

Once the name has been selected a careful search of trademarks in use – registered or unregistered – must be performed. The next step is registering a trademark. If the attorney does not include unregistered trademarks – especially in the United States – and one is found later to have been in use first, its rights will be protected.  Thus the search will have been incomplete and all benefit of the mark will be lost.  Damages could be awarded against the unauthorized user and all advertising and packaging materials would no longer be useful. The cost of the search and trade registration process can range from a few hundred dollars to over $2,000.00.  It can take up to a year.  All of this is well worth it given the value of a mark and, conversely, the cost of enforcing yours or being sued for trademark infringement.

Trademark Protection

To maintain the benefit of your trademark, even if properly search and registered, there are some basic actions necessary.

• Use the symbols: the encircled R if it is registered or TM, if it is not.
• Use the trademark – that is, make commercial use of it.  If you are not using it, especially in the USA, it may be unprotected
• Always distinguish between the brand and the type of product.  Xerox will never say: “Buy our Xerox machine” or “it’s easy to Xerox a document”.  (If they did, Xerox would become the next “zipper”!)   Instead they will refer to a Xerox brand photocopier and describe the ease of photocopying your paper on their brand of copier.
• Enforce your rights under the intellectual property act.  If you fail to challenge an unauthorized user, your rights may not be protected later.

To summarize, trademark selection and protection lays the groundwork for the success or later failure of the mark to provide the intended benefits.

A trademark attorney with expertise in the legal issues of distinctiveness and usage, and the search and trademark registration process is an efficient means of safeguarding your rights.

• If you have more questions or may need legal assistance regarding a Trade Mark matter, Consult Your Case for Free with a local experienced Intellectual Property Lawyer.