Trademarks represent your goodwill, the reputation of the goods and services you provide. They help people differentiate between your products and services and those from other sources.

Trademarks are typically embodied in the following:

• Business names
• Logos
• Slogans(not protected in JP)
• Domain names
• Product packaging/configuration
• Website design(not protected in JP)
• Non-conventional trademarks (colors, sounds, smells, scents, etc.)

Not all words, logos or slogans can be registered as trademarks. For instance, most IP registration offices will not register marks that contain surnames, flags or governmental emblems; the name or likeness of a deceased official; marks that are deemed immoral or scandalous (though keep in mind that the stance on this varies from one region of the world to another); the title of a single book or movie; or marks that are used in a purely ornamental manner, rather than for the purpose of indicating origin.

Trademarks are meant to inform consumers about the source of goods or services, not to describe such goods or services. This is why the strongest marks typically have no meaning in relation to the goods or services for which they are used (take, for instance, the trademark ”Apple”). The more distinctive and arbitrary you can make your mark, the stronger protection such mark will provide.

On the opposite end, a generic description of a type of product or service (such as using “blow-dryer” to describe a device that blows hot air) will typically not be afforded trademark registration. This is because, first, while such a generic description may adequately describe a product, it does not provide any indication regarding its source and, second, allowing registration of purely descriptive terms would prevent others from using those terms in commercial settings.

Finally, another typical reason for authorities to refuse registration is what is known as “likelihood of confusion.” This occurs when the mark you want to register is similar to a mark used by a third party and is used to describe related goods and services.

How to protect your trademarks:

Choose a strong mark by avoiding descriptive “generic” names, and instead pick a “fanciful” or “arbitrary” mark. The less obvious your trademark is, the better off it will be.

Conduct a thorough trademark search, and make sure the trademark is available in the first place!

Make sure you select the proper class of goods for your trademark, and decide whether to register a standard character format mark, or a styled (design) format mark.

Use your mark appropriately and consistently, and use the appropriate registration symbol. This will make it easier for your customers to find you.

In the US, know whether the mark is already being used in your own region or in international commerce (If the mark is not is use in the US, but you are not yet ready to register it, consider filing an “intent to use” application).

Vigilantly monitor for infringement. For example, review your marks and brand on a weekly basis on search engines. You can use Google Alerts and social media monitoring tools to monitor key terms and automate the monitoring process.

Take action as soon as you discover infringement (for example, by consulting an attorney and sending a ‘cease and desist’ letter).

A trademark is like a muscle that gets stronger with use – use it, own it, and more people will recognize it!

Typical trademark mistakes:

1.Committing to a mark without having performed a search on pre-existing similar trademarks.

Before you engage efforts and money into developing a trademark (for instance by designing a website or printing packaging bearing your trademark) make sure you perform a comprehensive search for similar marks. This will help avoid wasted costs and potential problems during the application process.

2. Believing domain name business name registrations can afford trademark protection.

A domain name can function as a trademark if it is used in a way that identifies the sources of particular goods or services. For instance, “Amazon.com” is used both as a web address and as a trademark. But each protection required two separate registrations: one with the domain name registry and one with the USPTO. Just like a domain name can become a trademark, a business name can also be used to describe goods and services. But again, two separate registrations are required.

3.Postponing filing an application.

Trademark rights are often created by the use of a mark in commerce, rather than through registration. Keep in mind, however, that while registration is not required it will enhance and help you prove your rights. Registering your trademark creates the legal presumption that you are the legal owner of the mark and that as such you have the right to use it in the country where it was registered. It informs others that you are the owner of the mark and often is a prerequisite to act against infringers in court. In the US, a Federal registration also gives you the right to use the ® symbol.

4.Not checking on the availability of the corresponding domain name.

Trademarks and domain names are different. To avoid potential conflicts, make sure both the trademark you wish to use and the corresponding domain names are available for registration and that no related goods or services are branded in a way that sounds, looks, or feels similar.

5. Not using the trademark or otherwise failing to control how it is used by licensees.

In the U.S., trademark applicants must certify that they are using, or have a good faith intent to use a mark in connection with specific goods or services (this is not the case under the European Union’s Community Trade Mark Regulation – always consult with your attorney for advice specific to the jurisdiction where your business operates.) Accordingly, failing to use your trademark in commerce may weaken your rights or make them harder to prove. Similarly, rights in and to a trademark may be lost when licensed to third parties without monitoring how those third parties use the trademark. To avoid this you should always retain some form of quality control over licensed goods or services bearing your mark and ensure you put all licensing terms into writing.

Notes:

You can find a lot of useful information on your own by performing a basic web search and using available databases such as the USPTO’s Trademark Electronic Search System (TESS) database. Some companies may offer to help with your application or in evaluating the market value of a potential brand but, unless there’s an attorney on staff, these companies will not be able to help you respond to official letters received during the registration process, so you may end up incurring additional legal fees. While some registration offices (such as the French INPI or the UK Intellectual Property Office) are able to provide pre-registration clearance services for a cost, the USPTO does not conduct prior trademark searches and is not able to provide legal advice. For those reasons, many applicants hire an attorney to help them navigate through the process by conducting a comprehensive trademark search (including searches for unregistered trademarks), and preparing responses to any refusals or demands that a registration office may issue.

Want to know more? Read about trademarks on our blog.
Why you need to register your trademark today
Registering your trademark: What do you need to know?
Have more questions about trademarks? Post them to our experts.