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Whether you’re getting ready to launch a business or a product, or you’ve already been in business for several years, trademark protection of your company and/or product name, design mark, color, or sound, or slogans and packaging is crucial.
Trademarks can be applied to words, logos, phrases, shapes, sounds, or colors. They can also include initials and number combinations such as IBM and 3M. The following are examples of different items that can be registered for trademark protection:
- Design marks: may consist of product packaging or trade dress for goods or services.
- Slogans: A slogan can function as a trademark if it is not merely descriptive or informational. For example – HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS FOR SURE for a hair coloring preparation; and, QUALITY THROUGH CRAFTSMANSHIP for radio equipment.
- Color: Color marks are trademarks that consist of one or more colors used on particular objects. For trademarks used in connection with goods, the color may be used on the entire surface of the goods, on a portion of the goods, or on all or part of the packaging for the goods. For example, the color pink applied to Owens-Corning fiberglass insulation. Color is usually perceived as an ornamental or functional feature of goods or services, which is not subject to trademark protection. However, color can function as a mark if it is used as a trademark and if it is perceived to identify and distinguish the goods or services and to indicate their source.
- Sound Marks: A sound mark identifies and distinguishes a product or service through audio rather than visual means. Examples of sound marks include: (1) a series of tones or musical notes, with or without words, and (2) a word or words accompanied by music.
If you’re beginning to think about your business’ trademark particulars, or if you already have a solid trademark idea, keep these tips in mind:
- A trademark is a word, name, symbol, or device that distinguishes the identity of a product or service provider from other brands.
- Ideally, the trademark is simple, short, easy to pronounce, easily recognizable, and readily remembered.
- A trademark should be highlighted by display in capital letters or in italics so that it is easily distinguishable from other words in close proximity.
- Notice of trademark rights should accompany the first or most prominent use of a trademark on the product in advertisements, marketing materials, etc.
- A trademark should not be used as a noun, but must always be used as an adjective. Example: Buy BAND-AID bandages for your scrapes and cuts. Not: Buy BAND-AIDS for your scrapes and cuts.
- A trademark should not be modified or used in a different form, for example, through hyphenation, combination, or abbreviation.
In the United States, it is not necessary to register a trademark to develop rights in the mark; however, registration does provide significant advantages:
- Federal trademark registration grants rights throughout the entire United States. Without federal trademark registration, use rights are only valid in a company’s service territory or where the product is distributed.
- Federal trademark registration is prima facie evidence of a valid trademark, denoting the registrant’s ownership of the mark, and the exclusive right to use the mark in connection with the goods or services.
- A registered trademark is more likely to appear in a search report, and this may dissuade others from adopting a mark that is identical or confusingly similar to the registered mark.
- The U.S. Patent and Trademark Office may refuse to register a third-party trademark on the basis of a prior registration. This reduces the likelihood that a costly opposition or other proceeding will be necessary in order to protect exclusive rights in the registered trademark.
- Once a trademark registration is granted, it can be maintained as long as the trademark is used in connection with the goods or services for which it is registered. Periodic proof of use must be filed with the U.S. Patent and Trademark Office in the form of a declaration of use and at the time of renewal.
At the law firm of McNeely, Hare & War LLP in Washington, D.C., an experienced trademark lawyer will conduct a thorough search to determine if your proposed trademark is available for use. This search should be done as soon as a new trademark is proposed and before any significant expenses for development, advertising, or printing are incurred. If a trademark is adopted without performing a search and it infringes on another’s trademark rights, it often becomes necessary to adopt a new trademark.
Our trademark lawyers will review the search results and make a recommendation as to the availability of the proposed trademark. While fanciful or arbitrary marks make the best trademarks, suggestive or descriptive marks can also be used if they are made more distinctive by adding an original design element, stylizing the lettering, adding or deleting words, etc.
At McNeely, Hare & War LLP, we recognize the importance of maintaining a strong trademark and the business harm that can result from trademark dilution. An attorney that is familiar with trademark practice and procedure can lead you through the U.S. or international trademark registration process and can explain the benefits of trademark registration.