Whether you are launching a new business or adding a new brand to your existing business, selecting the right trademark can have a great impact on its success.

A trademark is not just the name of your business and brand, it is a source identifier. It has the potential to quickly convey to a customer information about what you are selling, represent your company’s public image and reputation, and often becomes its most valuable asset. 

With the tremendous opportunities for growth and success that the right trademark and branding strategy can provide, it is important to review all business and legal considerations before adopting a new trademark.

We have provided some helpful “dos and don’ts” when you are selecting a trademark.

DON’T select a mark that is descriptive or generic for a product you are selling or a service you are providing. 

A descriptive mark may be great at conveying to a customer the products or services you are selling but it may not be a strong trademark.  It could be difficult to enforce your rights if a third party is infringing on your trademark rights.  It may also only be eligible for registration on the Supplemental Trademark Register until you can show that your mark has acquired distinctiveness, so that it becomes associated with your business, rather than merely as a descriptive word.  Unless there are compelling circumstances supporting the adoption of a descriptive mark, it should be avoided.

A generic word can NEVER receive trademark protection.  A generic word is one that the public understands to be the common name of a product or service. An example of a generic mark would be using the word “banana” as a mark to sell bananas.  A generic word is not protectable and any use of a generic mark would provide no value to your business.

DO conduct a search for a mark prior to adopting it.  

Conducting a trademark search is one of the most important steps you can take in selecting a trademark.  One of the main goals of your trademark is to distinguish your goods and services from those of your competitors.  

A search can uncover risks that a particular trademark could pose in the future if a third party may already have rights over a particular mark. If a third party is using an identical or similar mark in connection with the same products or services, they may have rights as a senior user of the mark that may put any rights you acquire in your trademark at risk.  

It may not be easy to decide which marks appearing in a search pose the most risks, as there are many factors to consider.  An experienced trademark attorney can help you navigate the process of conducting a trademark search.

DO apply for a trademark registration for your mark.

A federal trademark registration is not necessary to adopt and use a trademark. However, a trademark registration can provide several benefits and rights that would help protect your brand. Some of the main benefits of a principal trademark registration, include:

• a presumption of validity of your ownership of the mark and your exclusive right to use the mark in the U.S. in connection with the goods and services listed on your registration
• the right to use the “R” trademark registration symbol in connection with your mark
• the right to file a lawsuit in federal court to enforce your trademark registration rights against an infringer
• the ability to use your registration to seek protection for the mark in foreign countries
• if you import your products into the U.S., the right to register your mark with U.S. Customs and Border Protection, who may stop imports of goods with an infringing mark

DON’T forget to include a complete and accurate list of the goods and services on your application

One of the most important components of a federal trademark application is the list of goods and services. A trademark registration only protects the mark in connection with the goods and services on the registration.  If you plan to use your new mark in connection with t-shirts, jewelry and handbags, for example, each of these items must be listed separately on your application.  

Crafting the list of goods and services should be done with consideration of your current and future plans with your new mark.  You should also consider the timeline for when you may launch a particular product or service when deciding which items to include on your application.  This is important because the rights to any particular mark in the U.S. are based on actual use of the mark in commerce.  In fact, proof of qualifying use of a trademark is required prior to receiving a federal trademark registration. If you are not planning on selling a particular product for at least several years, your strategy for protecting your mark in connection with this product may be different.

A large percentage of Office Actions from the USPTO that require additional information from the applicant, involve issues with the list of goods and services.  To save time and prevent avoidable hurdles in the trademark application process, a well thought out strategy should be considered for protecting each of your goods and/or services.

If you need assistance with a trademark matter, feel free to contact us.