Got a Fantastic Idea or Product? Let’s Talk Trademarks in the Real World
Let’s talk about how you protect your trademark. There are two main criteria that the USPTO will look at when deciding whether to register your trademark in all 50 states. Learn more.
Alright, you’ve got a great idea or a fantastic product, and even better, you came up with a killer name – awesome! But, how do you copyright the name? You don’t. You trademark it with the United States Patent and Trademark Office (USPTO).
Think of it this way: creative works like Harry and Hogwarts are works that copyright applies to, whereas marks (logos and words) are source identifiers for products and services (think the swoosh for logo marks and Nike for word marks) – trademarks identify the company source that the product or service comes from.
Great, now that we know what, let’s talk about how you protect your trademark. There are two main criteria that the USPTO will look at when deciding whether to register your trademark in all 50 states:
1) descriptiveness and 2) similarity.
Descriptiveness deals with how descriptive of the products and services the mark is or isn’t. If your mark is descriptive, no dice, can’t register a trademark. For example, if I start a company called Purple Banana, which sells purple bananas, the name/trademark is too descriptive to register as a trademark with the USPTO. However, if I start a Purple Banana company and provide legal services, there is no danger of a descriptiveness refusal.
Similarity deals with how similar your mark is to other, already registered trademarks. So, building on the example above, if I try to register Purple Banana for legal services, there are two relevant considerations:
1) your mark has to be distinct in the specific trademark class applicable to your goods and services and 2) a mark can be considered too confusingly similar if it has the same “commercial impression” as another mark.
Let’s start with trademark classes (there are a total of 45 classes) – legal services fall in Class 045, along with other professional services, so I need to be the only Purple Banana mark in Class 045. Class 016, which is for books and other paper products, can have a Purple Banana in it, which won’t be cause for rejecting my application for Purple Banana, because I will be applying in Class 045.
Second, a commercial impression is a big one and basically, means, if there is another mark for Purple Bananas and Legal Services, the commercial impression of that mark is going to be the same as Purple Banana (for legal services), despite different words being present in each mark. The notion being, if you google searched Purple Banana legal services and my law firm Purple Banana came up, but so did Purple Bananas Legal Services, the commercial impression makes it pretty hard for the normal consumer to differentiate the two businesses – that means they are confusingly similar marks, and the USPTO is unlikely to register my Purple Banana mark if Purple Bananas Legal Services is already registered.
This is a high-level outline, and it can be much more involved, so be sure to go beyond your google search and work with a trademark attorney to ensure you get registered, but more importantly, ensure you avoid a cease and desist for infringement!
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