A trademark is a word, phrase, symbol or design that identifies the source of goods and services. US Trademark Registration can be done with the U.S. Patent and Trademark Office (USPTO) or secured through common law trademark rights (also known as unregistered trademarks).
Your trademark name must be both available and meet certain requirements. To find out whether your trademark is available, search the USPTO’s federal trademark database.
The USPTO’s federal trademark database contains records of all pending and registered trademarks. To check if your proposed trademark can be registered, search the database for any mark that is identical to yours or confusingly similar. You can also search for marks that are included in a broader category of goods or services than your proposed mark. If there is already a registered trademark rights holder with an identical or confusingly similar mark, you will not be able to register your own mark under this name without consent from the existing holder.
For example, if you want to use “Blue Bird” as the name of your new boutique clothing store, make sure it isn’t already in use by another brand before submitting an application!
If the proposed trademark is considered “confusingly similar” to another registered or unregistered mark, the Trademark Office will reject your application. However, you may be able to overcome this obstacle by showing that your proposed mark has acquired distinctiveness through use in the marketplace or by showing that it has been used long enough to become distinctive (this can take anywhere from three to five years). To learn more about how long it takes for a trademark to become distinctive, see our page on how long does it take for a trademark registrationThe Federal Circuit Court of Appeals agreed with the trial court’s decision that Wal-Mart had infringed Acme’s trademark. However, the appellate court reversed and remanded the case back to district court because it found that Acme failed to prove secondary meaning in its mark.
Trademark registration or application
Secondary meaning requires that the public associates a particular mark with a specific source of goods or services, rather than just its basic descriptive qualities. You can also search for any registration or application that is pending or not in force. This is useful if you want to see whether another company has applied for a trademark similar to yours, but hasn’t yet received approval. It’s also helpful if there are any competing applications before the USPTO that may impact your ability to get a mark registeredIf there are no registered trademarks that are identical or confusingly similar to your proposed mark, you can proceed with an application. You will also have to conduct a USPTO Trademark search of the database for any pending applications in your category of goods or services. If one exists, and it is not abandoned, you must wait until after its registration date passes before filing for yours…?
You can search for any mark that is identical to yours or confusingly similar. You can also search for marks that are included in a broader category of goods or services than your proposed mark. For example, if you want to register a trademark for beer and you’re searching for “beer”, it would be more efficient to search using the broader category of “alcoholic beverages” instead of just “beer” since there may be fewer results returned in this category.
Searching is free, so don’t worry about wasting money on an expensive tool when you can use the free one!
A trademark must be distinctive to be protectable. A mark is distinctive if it serves to identify the source of a product without first describing what the product is. A term that merely describes a quality of the product (such as its color) will not be considered distinctive. Instead, it must take on a separate meaning beyond its ordinary meaning when used as a mark.
For example, in 1992, Acme Products Co., Inc., sued Wal-Mart Stores Inc., claiming that Wal-Mart’s use of “Great Value” infringed upon Acme’s registered “Great Value” trademark. The trial court agreed with Acme and ordered Wal-Mart to cease using its Great Value mark; however, on appeal by Wal-Mart, both parties agreed that since no evidence was presented at trial showing actual confusion between products sold under these respective marks or any possibility for confusion among consumers regarding which company manufactured or distributed each item marketed under these respective trademarks, there was no likelihood of confusion between them (and therefore no infringement).
If the proposed trademark includes terms or designs that are common in the industry or descriptive of the goods, this may make it more difficult to protect your mark against competitors. However, with certain types of marks such as suggestive marks, it will be easier to obtain protection because suggestive terms inherently have some level of distinctiveness.
Trademark protection is based on distinctiveness (a legal term), which means that a mark must be considered unique from other existing ones within its industry. In order for a proposed trademark to be considered distinctive and receive protection, you should consider whether people would associate your proposed mark with your product or service when they see it used by another company in a similar field as yours.
Still have questions? Review this article again for better understanding regarding USPTO Trademark Filing.