What Is a Trademark?

A trademark is a symbol or word used by a business to identify their unique products; although trademarks (called servicemarks when used to identify a service) are only available when they are not already in use. However, to claim a trademark for your business, you must use it commercially and register it with the United States Patent and Trademark Office (USPTO). This office will determine whether your desired trademark meets the USPTO's requirements. Furthermore, to prevent marketplace confusion, the USTPO officials will consider whether the trademark in question sets your brand apart from similar existing products and whether the trademark you seek is identical to another mark already in use in your sector. Though if your trademark does not meet these criteria, the USPTO will reject your application.

The USPTO will consider these factors before searching the database of current U.S. trademarks, but you'll also need to ensure that someone in your local area or industry is not using a similar trademark that has not been registered. This individual or business would still have rights over the trademark even if it is not registered, provided they were using it first. Finally, it is worth noting that a trademark cannot merely be a description of the product in question; in fact, the best trademarks, such as Kodak's, are not descriptive at all.

Firstly, before spending money to register a trademark or business name, you should search the relevant database to confirm that the trademark you want is not already in use. If you use a name that is trademarked by someone else, you're guaranteed to lose your application fee, and even the registered trademark holder may sue you. So it's important to search for both registered and unregistered trademarks since a trademark holder who has not registered their mark has the legal right to prevent it from being used. This is because similar trademarks usually cause market confusion. Moreover, you could be responsible for paying the plaintiff's attorney fees if you're sued for using a federal trademark.

Verifying Trademark Availability

The USPTO offers a free access to its registered trademark database. Yet, it would be prudent to search the internet further to see if other companies are using your coveted trademark. Likewise, some rely on a fee-based search engine to look for registered trademarks. In addition, domain name search, such as the one provided by the nonprofit ICANN.org, can help you determine whether anyone else has registered a domain name that includes your desired trademark. You can also search your state's trademark database, usually maintained by the office of the Secretary of State. Even if one of these searches shows that another individual or business is using your desired trademark, that doesn't mean you can't use it. In fact, if this company/individual is in a different industry or located in another area of the country, you can likely use the same trademark without repercussions.

Trademark search engines allow you to search by keywords, phrases, images, trademark number, or trademark owner. Also, you can use the Trademark Class Search tool to confirm the class in which you should register your trademark.

Ways to Prevent Common Pitfalls Associated With Trademarks

Avoid common issues with your trademark application by taking these steps:

  • Choose a non-generic but powerful and suggestive word or phrase;
  • Avoid using offensive or vulgar words or phrases;
  • In addition to your brand name, trademark your slogan and domain name;
  • Conduct a thorough trademark search that includes a search for unregistered or similar marks, synonyms, antonyms, and foreign words; and
  • Respond promptly to any correspondence from USPTO.

Five Reasons Why Trademark Registrations Fail

Typical grounds for trademark application rejections include:

  • The mark in question is too similar in appearance, meaning, or sound to an existing mark;
  • The marketing approach of the desired mark is too identical to that of an existing trademark;
  • The trademark provides an unoriginal description or can be easily confused with that of another brand in the same geographic area;
  • The trademark could mislead, deceive, or confuse the public; and
  • The trademark is a proper name.

Above all, to overcome these obstacles,  you need the right legal expertise. Therefore, post your legal need in UpCounsel's marketplace to receive excellent guidance on how to register your trademark successfully. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel are graduates of outstanding law schools such as Harvard Law and Yale Law and have an average of 14 years of legal experience, including working with and on behalf of famous companies like Google, Menlo Ventures, and Airbnb.