In a world of fast-paced technological innovation, it is becoming increasingly important for new and established business owners to do everything they can to protect their intellectual property and, by extension, their brand identity.

There are many types of intellectual property and methods for protecting it, however, the focus of this article will be on trademarks and trademark registration.

Namely, this article will focus on (1) defining “trademark” and “service mark” (trademark for goods and service mark for services), (2) identifying the type of intellectual property eligible for trademark protection, and (3) introducing the process of registering a trademark with the United States Patent and Trademark Office (the “USPTO”).

What is a Trademark?

A trademark or service mark is any logo or other identifying mark that helps customers distinguish the goods and services of one seller or provider from the goods and services of another. More specifically, a “mark” is any word, phrase, slogan, design, symbol, or combination of the above that identifies specific goods or services in the marketplace.

What Intellectual Property is Eligible Trademark Protection?

Trademarks are present in many if not all consumer items, brands, and services you use on a day-to-day basis (i.e. think of the words and designs associated with “Coca-Cola”, “Starbucks”, “Apple”, and “Nike”).

Trademarks often protect the names themselves (i.e. a standard wordmark) and the logos or designs that often accompany the name (i.e. Apple’s famous apple with a bite removed or the recognizable “Nike Swoosh” on the clothes of famous athletes). To be eligible for trademark protection, the mark must be
(1) unique or distinctive enough to clearly distinguish the source of the goods or services from other competitors in the market and (2) must not be confusingly similar to pre-existing marks. The more “fanciful” or “arbitrary” the mark is in relation to the goods or services it identifies, the more likely the USPTO will be to accept it and the easier it will be to identify in cases of infringement.

If the mark simply describes the goods or services it relates to, then it is more likely to be rejected by the USPTO for being “merely descriptive” or “generic” (i.e. attempting to trademark “The Bookstore” for a bookstore).

Why Register a Trademark?

Though a mark may have certain “common law” rights associated with it after its first use in commerce (automatic rights established through judicial decisions), these rights are often limited. Filing an application to register a mark with the USPTO is often advised because it, among other things, affords the owner the ability to defend the mark in federal court and provides a record of
ownership and use.

To learn more about potentially registering a trademark, contact Alex Montoya at [email protected] today.