Trademarks:

Creating and Protecting Intellectual Property Rights

Almost anything can be eligible for registration as a trademark. 

A word, phrase, image, color, or sound can earn registration if you are using it in commerce (or you plan to) and it is distinctive.

Trademarks can be registered with a state or the U.S. Patent and Trademark Office.   State-level registration protects your mark only in Virginia but it’s a good option if federal registration is unavailable.  Registration with the USPTO provides many benefits:  you own nationwide rights to your mark; it establishes a date of first use; if someone infringes your mark, it’s easier to recover money damages including attorneys’ fees. 

 

When applying to register a mark, it is essential to get the scope of protection right.  Your application must be carefully drafted to accurately classify and describe your product or service so you get the legal protection you deserve. 

You're ready to register your awesome trademark. What should you consider?

There are lots of websites that will file your trademark application.  That’s all they are – a filing service.  They will help you fill out the application and file it, but they don’t advise you.  It’s cheap and fast but it is unlikely to provide an appropriate scope of legal protection.

 Dunlap Law’s attorneys talk with you to determine what goods and services you are providing under the trademark.  Then we draft a description that maximizes the scope of your legal protection and increases odds of success for your application.  We also evaluate the right “Class” or “Classes” for your mark which also impacts the scope of your legal rights.  The more Classes associated with your mark, the broader your legal protection but there is a filing fee for each class. 

 We find the sweet spot between having as many classes as possible – thus the broadest protection possible – without spending money unnecessarily.

What does "distinctive" mean in the world of trademarks?

Hierarchy of Trademarks

Anything that distinguishes your good or service from your competitors is a trademark but not all trademarks are eligible for registration with the U.S. Patent & Trademark Office.  There are five categories of marks.  Think of it like a pyramid:

At the top of the pyramid, the strongest marks are deemed “fanciful.”  These marks are invented words have no inherent meaning when they are first coined and used to identify a good or service. 

Examples include:  Zillow for real estate; Rolex for watches; Xerox for copiers. 

In the early years of use, the owner of these marks must invest a lot of money in marketing and advertising to create an association in consumers’ minds between the mark and the good or service. 

The next level down on the pyramid are marks deemed “arbitrary.”  These marks are existing words that have a known meaning but that meaning is not associated with the good or service sold under the mark. 

Examples include: Apple for computers; Lotus for software. 

The third category of marks are “suggestive” – they require a leap of imagination to link the good or service to the mark. 

Examples include:  Microsoft for software; Netflix for video streaming; or Airbus for airplanes.

The fourth category of mark is “descriptive”.  Generally, descriptive marks are not eligible for registration unless the applicant can show that, over time, consumers have come to associate the mark with their good or service.

Examples of a descriptive mark include “Crystal Clear” for water; or American Airlines for an airline.

Surnames, such as Hyatt, also fall into this category.  Hyatt Hotels has a registered mark because the mark “Hyatt” acquired distinctiveness over time and thanks to years of advertising. 

The fifth and weakest category of mark is “generic.”  Examples include “tissue” for toilet paper or “clock” for clocks.  Generic marks are never eligible for registration.

Dunlap Law’s attorneys can help you work through the names you’re considering to strategically choose a strong mark.  Your mark will be more distinctive, stronger, and valuable if it is fanciful or arbitrary. 

Registering with the USPTO creates a business asset.  When you sell your business, having a registered mark may command a higher price. 

Dunlap Law can help.