Your trademark name can sustain your business and expand your market through time. It is your banner, your product source, and your arm against your market competitors.
The “Apple” you knew was never the same as before. The first “Apple” laptops didn’t gain much fame at first. But when Steve Jobs presented a set of unique designs for the 1st generation iPhones, and even operated a new software, new tech brands arose and competed.
Similarly, the Cola Wars between “Pepsi Cola” and “Coca Cola” changed the face of brewery manufacturing. For years, these two trademark names have shared with your fun moments and are present at your convenient breaks. Both colas may have similar packages, but you’ll always know their differences through their trademark names.
Now, you may wonder how they achieve their success. You wanna know what’s the secret? Sit back and relax. This article will help you learn how to trademark a name.
What are the main types of trademarks?
A word mark, or ” standard character marks,” represents a plain English character of a brand name. It seeks to protect the wordings of a mark, excluding its font style, size, color, or any ornamentals displayed. Hence, only the registered owner has the exclusive rights to use the words as represented in the word mark.
Regardless of the combination or disposition of words and numbers, word marks offer broad protection to phrases and words registered. For instance, the standard character mark of “Facebook” prevents any other registrants from using “Facebook,” regardless of its style, color, and design.
The calligraphy on how the name “Coca-Cola” is displayed and the symbol “swoosh” placed next to Nike Air are some best examples for a design mark.
A design mark, or commonly known as a “logo” or “specialized format marks,” represents words or letters with ornamental features, such as colors, shapes, font style, etc. Here, word marks can incorporate any design elements, which can function without any wordings.
For instance, the logo of “a twin-tailed mermaid” that has features of green and white colors, enclosed in a circle, depicts the world’s famous Starbucks logo. Even though it has no word marks inside the logo, still, the name “Starbucks” receives trademark protection.
Another example is a combination of word mark and symbol: FACEBOOK. The blue “F” block design mark outstandingly represents the design mark of Facebook, having registered its name “FACEBOOK” as a standard mark.
If you want to trademark a geographic origin, characteristics of goods or services, or a product manufactured by members of a labor union or other organization, then certification marks are for you.
Certification marks are rarely registered in the USPTO. However, they play a crucial role as they set standards for compliance of names, symbols, or devices used by groups or persons.
A perfect example for certification mark is the EPA’s “Energy Star” certification mark that used to appear on electronic appliances.
How to Trademark a Name?
You have the liberty to choose any names for your trademark application. However, the process of applying for trademark registration is complex and intricate. Do you know that there is an 80% chance of failing in your first trademark application?
That’s why, to optimize your trademark cost and lessen your burden, it is best to hire a trademark attorney who can guide you in the process.
Requirements for Trademark Application
According to J.D. Houvener, a Trademark attorney serving Los Angeles, suggests that “the distinctiveness, the selling point, and the source-identified factor of a mark” are requirements for trademark application.
First, the distinctiveness of your trademark is your golden ticket for a federal trademark protection and registration at USPTO. The ability of your mark to “distinguish and identify” is the essence of trademark distinctiveness by using fanciful, arbitrary, or suggestive marks.
Second, your trademark application won’t prosper if you didn’t have an actual selling of your goods or servicesin the market. During your application, the examiner requires you to provide the date of actual use and first use,depending on your filing bases.
Thirdly, your mark should have a source-identified factor, which allows your customers to know the source of your goods or services. One way to examine this third requirement is to check whether or not your mark could confuse a generic and descriptive term.
For example, the word “chair” is a generic term for a trademark, since it bars it from confusing its actual source to its name. However, when you name your product “Apple” that sources mobile devices, then you would have a greater chance to get trademark protection due to its arbitrariness.
To get you a winning trademark name that can pass through the standards of the USPTO examiners, Bold Patent offers cost-effective fee and proven results in trademark registration. Get your free consultation today!
Process for Trademark Application
In processing for a trademark application, the USPTO classified into two major parts – for American applicants and foreign applicants.
For American applicants, you have the liberty to choose between the following bases according to your date the use:
(1) Section 1(a) – Actual Use basis. As the name implies, you can now file for a trademark application even if you have been using the trademark in U.S. commerce without registration;
(2) Section 2(B) – Intent to Use. Here, you have yet to use the trademark in U.S. commerce. However, it doesn’t discount you for legal protection. You only need to prove that you’re filing the mark in good faith by providing a Statement of Use (SOU) along with a specimen.
For foreign applicants, the USPTO provides you two foreign basis:
(3) Section 44(D) – Foreign Application basis. The law requires you to provide a certificate that you have applied for a foreign trademark application, six months before your U.S. application. When your examination validates your foreign certification, you can claim for a priority claim, which its date will automatically be used as your date in the U.S. application.
(4) Section 44(E) – Foreign Registration basis. Using the exact mark and exact scope of goods and services, the foreign applicant may also file for a priority claim.
PRO TIP: Under Sec. 44 filing, you need to be consistent with the details you omit or add. Remember that inconsistencies won’t prosper your application.
The “Apple” you knew today was never the same as before. Because of its strength in protecting its mark, it sustained its streak and still the leading brand for excellent mobile phones. Similar to the beverages you knew, trademark has helped their branding – from packaging to their distinct taste.
Indeed, a trademark is your product source, your banner, and your arm against your market competitors. It can be classified into three types, including the word mark, design mark, and certification mark.
Word mark protects the specific wordings of a mark, but the design mark covers both its ornamentals and its wordings. Hence, the certification mark helps our products to be safe and well-packaged.
To trademark a name, you only need to remember two things: its requirement and its filing bases.
For its requirement, there are only three things to comply:
- The selling point; and
- The source-identified factor.
For its filing basis, the USPTO provides two major classifications:
- For American applicants
- Section 1(a) – Actual Use;
- Section 1(b) – Intent to Use;
- For foreign applicants
- Section 44(d) – Foreign application;
- Section 44 (e) – Foreign Registration.