
What can be trademarked?
Trademarks are not just branding elements, they are your business's unique identifiers. They function to distinguish the source of goods and services. A trademark can be a company name, a product name, logos, slogans, unique colors, sounds, and even scents associated with a brand. Even product packaging can be a trademark if it uniquely identifies the product's source. These are not just elements; they are your business's unique identity.
However, there are limitations on what terms can be trademarks. Specifically, generic terms, descriptive names, and geographically misdescriptive words cannot be trademarks.
Determining the Strength of a Mark
Trademarks can be classified based on their strength. These classifications are arbitrary or fanciful, suggestive, descriptive, or generic. Understanding these categories helps evaluate a mark's suitability as a trademark.
Arbitrary or Fanciful
The strongest nark are "fanciful" or "arbitrary" terms. Fanciful terms are made-up words, such as "Kodak," that have no meaning outside of their use as marks. Arbitrary terms are common words that have no direct association with the goods and services they represent, such as "Apple" for electronics. These marks are strong because they require a mental leap to associate the mark with their goods and services.
Descriptive
"Descriptive” terms are considered the weakest type of trademark. These terms describe the quality or purpose of a good or service, for example, "Cold and Creamy" for ice cream. Such terms can serve as trademarks only if consumers come to recognize them as a source identifier. Although these terms may not be immediately suitable for trademark protection, they can gain strength over time through the development of fame and consumer association.
Suggestive
The next strongest marks are "suggestive" terms. These terms allude to the nature or features of the goods and services without explicitly describing them. An example of a suggestive mark is "Netflix" for streaming services. These terms require a bit of imagination to connect them with their respective goods and services, but they provide excellent legal protection because they are inherently distinctive.
Generic
It is not possible to trademark “generic” terms as doing so would restrict other businesses from using the term to describe their own products. For instance, "bicycle" cannot be trademarked for bicycles. Moreover, trademarks can lose their legal strength and become ineligible for protection if they become too commonly used to refer to a particular product type.
Establishing Trademark Rights in the U.S.
In the United States, various methods exist to establish your trademark rights.
Common Law
When you use a mark to distinguish your goods and services, you automatically establish trademark rights in that specific area of use. These rights are known as common law trademark rights. However, these rights are restricted to the regions where the trademark is being used, and it can be difficult to prove ownership. These rights are enforced in state courts, and evidence of prior use within the area of use will be required.
Federal Registration
Alternatively, trademark rights can be established by obtaining a federal trademark registration, which provides exclusive rights to the trademark throughout the United States for the goods and services described in the registration. An application must be submitted to the United States Patent and Trademark Office (USPTO) for trademark registration. After review and approval, a registration certificate for the mark will be issued. The benefits of registration include the ability to file an infringement lawsuit in federal court and to record your trademark with U.S. Customs and Border Protection to help prevent the importation of infringing foreign goods.
Trademark prosecution in the US involves obtaining federal trademark registration from the US Patent and Trademark Office (USPTO).
Generally, the trademark prosecution involves the following stages:
U.S. Trademark Prosecution
1.
Trademark Search
Searching to identify potential conflicts and ensure the mark's uniqueness. This is essential whether using common law or a federal registration.
4.
Publication
If the trademark application is allowed, the mark will be published in the USPTO's Official Gazette for a 30-day opposition period.
3.
Examination
An attorney at the USPTO examines the application to ensure it meets all legal requirements.
2.
Trademark Application Filing
When registering a trademark, you can opt for a use-based or an intent-to-use application. If you choose a use-based application, you must provide information on the mark, the associated goods and services, a date of first use, and proof of use in commerce. If you opt for an intent-to-use application, a date of first use and evidence of commercial use are not required since the mark is not yet being used in commerce.
5.
Registration
The USPTO issues a registration certificate to the trademark owner, granting exclusive rights to use the mark nationwide for the described goods and services.
Enforcing Trademark Rights
Protecting your trademark is crucial for maintaining its value and brand integrity. Monitoring the market to detect any unauthorized use of your trademark is essential.
If you find that your trademark is being infringed, you may want to consider sending a demand or cease-and-desist letter requesting that the infringement be stopped. Sending these letters puts the infringer on notice and hopefully initiates negotiations between the parties.
If the infringement continues, a cause of action for trademark infringement may be filed in federal court.
You can also record your trademarks with the U.S. Customs and Border Protection agency to help prevent the importation of goods that infringe on your trademark.

Trademark owners who wish to extend their home country trademark application or registration to other countries can do so through a Madrid Protocol application. This application provides for the extension of the home country application or registration to over 120 member countries using a single application.
To file a Madrid Protocol application, the applicant must specify the goods and services covered by the trademark and submit the application through a home office to the World Intellectual Property Organization (WIPO). The applicant must also indicate the member country where protection is sought and pay the corresponding filing fee at the time of filing.
Once the application is submitted, WIPO examines it to ensure all necessary information is provided. After approval, the trademark is registered and published in the WIPO Gazette of International Marks, and the registration is forwarded to the selected member countries for prosecution in each country.
This process saves time and money for trademark owners seeking international protection for their trademarks.
Madrid Protocol
It's common for people to register domain names that infringe upon existing trademark registrations. In such cases, the Uniform Domain Name Dispute Resolution Policy (UDRP) can be used to contest the infringing domain name. The UDRP was created by the Internet Corporation for Assigned Names and Numbers (ICANN) to resolve disputes related to domain names that infringe upon existing trademarks.
To start a UDRP action, the complainant needs to meet three crucial requirements:
Domain Name Resolution
1.
The domain name in question must be identical or confusingly similar to a trademark or service mark to which the complainant has rights.
When a UDRP complaint is submitted, a dispute resolution service provider assesses its validity. A panel is appointed to decide whether the complaint is valid. The panel's decision can lead to the transfer or cancellation of the domain name, which can help address the infringement without the need to go to court.
3.
The domain name must have been registered and is being used in bad faith.
2.
The domain name registrant must have no rights or legitimate interests in the domain name.
How TCP Law Can Help
Employing the services of a trademark attorney at TCP Law can significantly help you protect and enforce your trademark rights. A trademark attorney will help you assess the strength of a trademark infringement claim, whether you are asserting the claim or responding to a claim asserted against your business.
If you have general trademark questions or want to discuss your specific trademark matter, please contact me at john@tcplawfirm.com or at 917-612-1059.
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Trademark Basics
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