Imagine you’re driving down a busy street, looking for the business someone referred you to.
You can’t remember the exact address, and you realize there are a whole lot of storefronts with the name you were given!
That’s what today’s online marketplace is like.
It’s incredibly saturated with “look-alike” brands. And this forms a compelling argument in favor of registering your trademark.
Trademarks–which can be a word, phrase, logo, or other design–act as a unique identifier that helps customers distinguish your goods or services from those of other businesses.
They play a critical role in brand protection and recognition by making it easy for clients and customers to find your business through all the other distractions.
The last thing you want is for your customers to be scrolling around the internet, wondering which “store” is yours.
Choosing a strong trademark to register is a great way to put out a distinguishable signpost!
**Real quick, first: this post is legal education and information. It’s not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us.
This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2. Please chat with an attorney in your area to make sure you’re protecting your business.**
Choosing a strong trademark: understanding levels of distinction
For a trademark to be registrable with the USPTO (United States Patent and Trademark Office), it must be distinctive.
But not all levels of distinction are created equally.
There are five levels of distinctiveness, from fanciful (offering the strongest level of protection) to generic (offering no protection at all).
Fanciful words can’t be found in your dictionary or anywhere else.
They’re words that have been invented for the sole purpose of functioning as a trademark.
For example, “Kodak” and “Lexus” are both fanciful words.
Fanciful distinction offers the strongest trademark protection because it’s impossible for anyone else to use a word that doesn’t exist!
Arbitrary words are real words, but they have no association with the goods or services connected with them.
Great examples of arbitrary words include –
Apple: it has nothing to do with tech
Amazon: originally not a word associated with an online marketplace
Arbitrary distinction is the second strongest trademark protection level.
It would be pretty difficult to choose the same arbitrary word as someone else in connection with your own goods or services.
Suggestive words aren’t completely arbitrary, but they require some imagination, thought, or perception to connect them with the relevant goods or services.
These are words that suggest a quality of the goods or services without saying it outright.
Suggestive examples include –
Coppertone: “Copper” suggests the skin-darkening properties of a tanning oil
Jaguar: “Jaguar” suggests the qualities of speed, agility, and strength in a vehicle
Suggestive distinction is the third level of trademark protection.
It’s not as strong as fanciful or arbitrary distinction, but it still offers some degree of protection from copycats.
Descriptive words are just that–words that describe the nature or a particular characteristic of the product or service with no distinctiveness.
For example, “Comfortable chairs” describe, you guessed it, chairs that are comfortable.
Descriptive distinction offers the weakest level of trademark protection.
A descriptive mark will be refused registration with the USPTO unless you can show it’s acquired a secondary meaning. i.e., a consumer recognizes the mark as indicative of the brand and not just as a word.
It’s also possible for a descriptive mark to qualify for the Supplemental Register. (This is like the celebrity B-List of trademark registration, which provides more limited protections)
And after 5 years of continuous use with Supplemental Registration, you can file a new application for the Principal Register.
A generic word is one that’s become synonymous with the underlying product or service to the point where it can no longer function as an identifier for a particular brand.
For example, ‘cereal’ or ‘law.’
Generic words don’t make strong trademarks! They are so weak that they can never be registered as a trademark with the USPTO.
As a note, a trademark can also become genericized if the mark becomes identified with a type of product or service in the public’s mind rather than a particular brand. The trademark registrations for aspirin and cellophane both lost their trademark rights because of this!
Other things that can never be registered as a trademark
In addition to generic words, several other things will be refused for trademark registration.
>> Commonly used phrases.
You can’t register a phrase that’s part of common, everyday speech as a trademark.
For example, you can’t register “Drive safely.”
>> Phrases not used for business purposes.
Just because you use a phrase regularly doesn’t mean it identifies your brand.
For example, you can’t register “Have a nice day!” as a trademark.
>> Functional aspects of the product.
You also can’t register anything functional (i.e., necessary for the proper operation of the product) as a trademark.
For example, you can’t register the design of a drinking glass as a trademark.
Sidenote: You could talk with a patent attorney about these functional aspects.
>> A phrase on a t-shirt or other goods.
You can’t register as trademark phrases printed on t-shirts, mugs, or other merchandise unless it meets certain conditions
For example, you can’t register as a trademark the phrase “I heart NY” if it’s screen printed on the front of your merchandise.
(However, you could if it’s being used as part of your brand on the tag or hang tag and not just as a decorative phrase.)
These types of applications will receive an ‘ornamental refusal’ since the mark is being used as decoration and not a brand identifier.
There are also some additional rules about what you can and can’t register as a trademark when it comes to geographic terms, surnames, and government symbols.
Strong trademarks set your business up for success
This list is by no means comprehensive, but it should give you a solid place to start as you choose a strong trademark.
Set yourself up for whole brand protection.
Schedule a consultation with Nicole Cheri Oden Law® to get started building a strong trademark for your brand. Our consultations include:
Getting to know your business and goals
Explanation of the federal trademark registration process
A “knock out” search and identification of any red flags to help you save time and money (and identify if registration of a mark may not be worth pursuing)
Answers to all your questions about the federal trademark registration process so you feel comfortable and confident in moving forward
While you were previously required to include a copyright notice on your work for it to take effect, it’s now simply recommended to put people on notice that you’re claiming your copyright rights.
Butonce your idea is physically manifested, copyright rights are automatically attached.
And that’s great, but is it enough?
If you’re serious about protecting yourself from copycats and infringers, registration with the United States Copyright Office is required to do things like:
Actually enforce your copyright rights, and
Obtain things like statutory attorney’s fees and statutory damages.
When to use the Trademark (™) and Service Mark (℠) symbols
You know what a trademark is: it’s a unique identifier for goods that allows your customers to know at a glance that the product they’re getting is coming from you.
Did you know that a service mark is the same thing, but for services?
It’s less common to see the SM symbol in use, but you technically wouldn’t use the TM symbol for your online service business (like my law firm providing legal services, for example) the same way you would for, say, soap or hair products.
Both of these marks can be used to indicate you claim common law rights to the work you’re attaching the mark to, even though it isn’t a registered mark.
But while it may act as a deterrent to potential infringers, there’s a limit to how much you can actually do to enforce your rights until your mark is registered with the United States Patent and Trademark Office (USTPO).
The power of ® for registered trademarks
The most comprehensive way to protect your business assets is through federal registration of your mark.
You’ll know if someone has registered their trade or service mark if you see the ® symbol next to something.
Using this symbol without registration is actually a violation of federal law TMEP 906.04.
Even if you have a pending application, US trademark law states that improper use of the federal registration symbol is deliberately misleading and considered fraud.
So you definitely don’t want to use this symbol unless you know you’re allowed to.
Protect your business with the right symbol, and don’t let copycats, infringers, or fraudsters take advantage of you.
Many business owners think they can register a trademark themselves using an online service.
Why not save yourself a little money, right?
But those business owners don’t realize that they’re trading in their savings for a lot of headaches, and they could be jeopardizing the whole process to boot.
Hiring an attorney to register your trademark ensures much better guidance and advice, a smoother, less stressful experience, and an increased chance for successful registration.
And when approximately 1 in 5 trademark applications gets rejected annually, you want to do everything in your power to ensure your application is among the ones that make it through.
**Before we go any further, we need a disclaimer: this is legal education and information. It’s not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us.
This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.
Please chat with an attorney in your area to make sure you’re protecting your business.**
Benefit from working with a licensed attorney
While a lot of online service providers would love to make you think otherwise, most of them are not licensed attorneys.
So, then, who the heck are you paying to register your trademark when you use an online service?
Your guess is as good as mine.
The only way to ensure you benefit from hiring someone reputable and licensed to guide the way is to hire an attorney for trademark registration. Preferably one who specializes in that area.
Your attorney will conduct a comprehensive search
One of the first steps in registering a trademark is to do a thorough search to make sure there aren’t other businesses that already use the name or mark you want to register.
This is important because the results will allow your attorney to weigh in on your chances of registration success. And whether it’s worth your time—and the investment—to continue.
Conducting a comprehensive search isn’t the same as a clearance search with a quick look around Google or social media, either. It’s an in-depth process that covers federal, state, and common law and explores as many different avenues as possible so you can rest assured you’ve done your due diligence as a business owner.
Most online service providers don’t conduct searches, let alone thorough ones. They just… take your money and move on to the next customer.
This is a major problem (beyond the obvious) because failure to run a proper trademark search can mean you’re guilty of acting in “bad faith” and could actually cost you damages if you end up trying to register someone else’s mark.
Your attorney can respond to USPTO refusals
The United States Patent and Trademark Office (USPTO) is pretty particular about what does and doesn’t qualify for trademark registration.
If your application is met with a refusal, you or an attorney must file a response within 3 months, or your application will be abandoned if you haven’t paid to file a request for an extension.
And that would be a shame—and a waste of money—after you’ve come so far.
Most online services don’t include this in their pricing, so you could end up paying a lot more than you bargained for down the line if things take an unexpected turn.
Filing for trademark registration with an attorney provides peace of mind
The process of registering a trademark can be complicated, time-consuming, and filled with deadlines.
When you use an online service provider, you’re really choosing to tackle the journey on your own, which makes it easy to get overwhelmed and make costly mistakes that could jeopardize your whole application.
Hiring an attorney to help with trademark registration takes the stress out of the process and gives you total confidence that everything is being handled correctly.
And if anything does go wrong, you’ve got someone in your corner who can fight for your business.
Hiring an attorney to register your trademark will always be the clear choice to save you money, time, and headaches in the long run.
If you want to file for federal trademark registration in the United States, you can work with a licensed trademark attorney by booking a consultation with Nicole Cheri Oden Law.
You’ve all but cried yourself to sleep deliberating the perfect business name.
You’ve invested countless hours brainstorming a tagline you can use on your website, business cards, social media accounts, and beyond.
Your branding is in place and you’re ready to share your genius with the world.
But what if someone told you had to start all over again and there was nothing you could do about it?
Unfortunately, that’s all too real for some small business owners.
Don’t bury your head in the sand with the belief that it won’t happen to YOU.
The most important thing you have to do before naming your business, product or service is conduct a trademark search.
Let’s start with a brief overview of what a trademark is.
**But first, a little legal disclaimer: this is legal education and information. It’s not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us.
You should chat with an attorney in your area to make sure you’re protecting your business, okay? Okay! Moving on.**
What is a trademark?
A trademark is any word, name, symbol, or graphic used in commerce to indicate the source of a product.
(Quick note: a service mark relates to a service, but since trademarks and service marks are handled similarly under US law, let’s lump them together for now.)
A trademark could be your business name, service or product name, course name, tagline, logo, and more.
Trademarks may be unregistered under your state’s common law rights or registered (and therefore only protected) within your individual state.
Or they can be federally registered with the United States Patent and Trademark Office (USPTO) for a lot more rights and protection that covers you — you guessed it — federally.
The benefits of registering your trademark
The number one benefit of federal trademark registration is that you can enforce your exclusive rights to that registered mark across the US.
Plus, federal registration means:
The ® symbol can be used to alert potential infringers of your registration;
You could sue for infringement in federal court;
You can recover attorney’s fees and damages if your infringement lawsuit is successful;
An easier process registering your trademark internationally;
You’ve secured a valuable asset for your company.
And after 10 years of full statutory protection, you can renew indefinitely, so long as you file the correct forms and continue to use the mark.
That all sounds great, right?
It absolutely is but before you settle on the perfect name for your business, product or service, you need to ensure you aren’t building your whole empire on borrowed ground.
Why a trademark search is vital to your brand
These are the keywords in trademark law: Likelihood of confusion
Because, here’s the thing — even if your trademark isn’t an exact match for another, it also may be similar enough to another mark that a consumer is likely to be confused about the source of the product or service.
To make that determination, you have to look beyond the similarity of the marks themselves to the relatedness of the goods and services.
Let’s look at an example:
Delta (airline) and Delta (faucets)
Same name, both protected under federally registered trademark laws. How can that be?
Because a consumer is highly unlikely to confuse their bathroom sink with an airplane.
But you can’t be confident your own business, product, or service name will avoid potential risks or liability issues until you conduct a trademark search.
Conduct your own “knockout search” before a comprehensive trademark search
Before you spend good money hiring a lawyer to conduct a trademark search for you, do your best super-sleuth impression.
Look on social media sites
Check out domain hosting sites
Dig around beyond page one of Google
Check for existing registrations within your state and federally
If your quick peek around shows no existing conflicts, you’re ready for a much more comprehensive trademark search.
Your trademark search will dive even further into corporate and trade name filings (including common law usage) within your state and a complete look at registrations within TESS (Trademark Electronic Search System) through the USPTO.
To make sure similar matches are ruled out, your trademark search will also include things like:
different spellings (including homophones like ‘ate’ and ‘eight’)
foreign language equivalents
hyphenated and non-hyphenated versions
The key is making sure there is no ‘likelihood of confusion.’
If the names are close enough and in the same or similar industries, I hate to break it to you, but you may have an issue.
In which case, I promise you that name you love so much isn’t worth the headache of a rebrand later on.
A trademark search helps you “look before you leap”
Performing a trademark search before you proceed with the creation of your business, product, or service means you aren’t just jumping blindly off the deep end.
While no one can be 100% sure there isn’t another conflicting mark in existence, you’ll have peace of mind that there are no exact matches out there.
So using your mark won’t lead you down a path that ends with nasty infringement claims.
Plus, when you’re ready to register your trademark, you’ll have drastically improved odds that it goes through without any likelihood of confusion issues.
If you’ve done your own “knockout search” and you’re ready for a more in-depth search, work with an attorney.
The field of family law is evolving. Every family has options when it comes to moving through the divorce process. While the decision should be made on a case-by-case basis, with not every case best situated for a particular process, it’s important that families know they have options.
Everything I chat about is legal education and information, not legal advice and it does not create an attorney-client relationship between us. I am a licensed attorney in the State of California, but I am not your attorney unless a written Retainer Agreement exists with Nicole Cheri Oden Law, PC. You should consult an attorney in your area to make sure you’re taking the right steps for you and your family.
When people hear the word “divorce,” they typically think of litigation (i.e., the Court-based contentious process with the Judge making the decisions). Litigation can be both emotionally and financially draining.
In litigation, parties can file motions with the Court and seek temporary orders (such as spousal support, child support, restraining orders, attorney’s fees and costs, etc.) for relief pending a final trial. A typical litigated divorce can take between 6 months and 1 day to 5 years, although the various California counties attempt to process divorces within 2 years.
And there are some situations where this type of divorce is necessary. However, 95% of family law cases settle before they reach trial. There are other options.
Limited Scope Representation.
In Limited Scope Representation (or Unbundled Legal Services), an attorney handles only portions of your divorce (while the you handles the other portions). Think a la carte menu.
Limited Scope Counsel can act as Consulting Counsel to assist a party in mediation or a Collaborative Law matter.
Handle a particular issue (such as property division while you handles child custody, as an example).
The Collaborative Law process is an out of court option that uses a team-based approach. The parties commit to the process by executing a written agreement that indicates they will use good faith in negotiations and disclose all relevant documents and information.
Each party is represented by collaboratively-trained counsel. Other members of the team may be a:
Financial Neutral (accountant or financial advisor to help provide a clear picture of the family’s finances, which is especially helpful for complex estates);
Communications Coach (mental health professional for support in having hard conversations); or
Child Specialist (mental health professional for assistance with parenting plans).
The Collaborative Law process can be cheaper than traditional litigation – unless the parties decide to pursue litigation. The hallmark of the Collaborative Law process is if either party resorts to the traditional litigated model, Collaborative counsel must withdraw and the parties must retain new counsel (the exclusionary provision of the Collaborative Agreement).
The cooperative process can be similar to Collaborative Law BUT with the option of court intervention if negotiations are at a standstill (and without the exclusionary provision).
A cooperative case can involve a team or be structured as lawyer to lawyer negotiations.
Mediation is an out of court option that features a neutral facilitator.
The most common misconception about mediation is that the mediator acts as an attorney for both parties. She or he doesn’t. The mediator educates about common court practices and general family law principles and facilitates discussion between the parties.
The mediator does not make decisions, but guides the couple to make their own decisions.
Mediation can result in a resolution that is both faster and more cost effective. And it allows both parties to be in control of the final outcome. HOWEVER, for mediation to be successful the couple must be reasonable and able to compromise.
Divorce is not black and white. Every family is different. So, choosing a divorce process that makes the most sense for your particular situation is an important conversation to have with your family law attorney.
If you’re ready to chat about process for your divorce case in the state of California, schedule a consultation here.
This post is an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.