Make sure your chosen mark meets these 2 basic requirements before filing your trademark application!
Have you been thinking about sending in a trademark application? Good for you! The process can seem intimidating, but there are only 2 main things you really need to think about when applying: use in commerce and distinctiveness. These are fancy words for simple concepts—don’t worry, it’ll all be explained below!
Hey you! Yeah, you! If this whole trademark thing seems really confusing and overwhelming, why not start by reading How to Protect Your Business with Trademark and Copyright? It’ll clear a lot of things up.
If you’ve already read 3 Reasons to Trademark Your Business Name Right Now and How to Protect Your Business with Trademark and Copyright, then you’ll remember that trademarks are indications of quality and origin/source.
They help establish your business as an authority in the market and generate trust among consumers.
That being said, if you’re ready start your trademark application (or thinking about filing to protect your trademark), here are the two things you’ll need to keep in mind:
1. Use in (interstate) commerce
Picture it: the year is 1918. Mississippi becomes the first state to authorize prohibition of alcohol. President Woodrow Wilson outlines Fourteen Points for peace after World War I. Women no longer have to wear 25 layers of clothing and have stopped fainting on designated couches.
Two drug companies, United Drug. Co. and Theodore Rectanus Co., are in a bitter feud over the use of the trademarked word “Rex” (think: Rexall). The outcome of this legal battle isn’t necessarily important to state here, but what is important is what the court in this case had to say about trademarks at the time:
“[t]here is no such thing as property in a trademark except as a right appurtenant to an established business or trade in connection with which the mark is employed.”
Translation: you have to be actively using your trademark in business for it to be recognized. This is what is generally referred to as use in commerce or use in interstate commerce.
The "interstate" part comes in because the geographic area where you use your trademark in business has to cross state lines (if you're selling stuff online, you probably meet this requirement).
If you aren’t yet using your trademark in business, don’t worry! You can still apply to trademark your chosen mark (business name, logo, etc.) as long as you tell the US Patent and Trademark Office (“USPTO”), in writing, that you intend to use the mark in commerce in the future.
Why Is This Important?
If you are ever involved in a situation where someone infringes on your trademark, the rights to that trademark will be awarded to the first entity to use it in commerce (business). The earlier you use your mark in business, the better!
The second thing you need to file a trademark is for your chosen mark to be distinctive. Essentially, your mark needs to be different and unique enough to identify it as coming from you (your business) and to distinguish it from another source (another business).
The USPTO measures strength of your mark in two ways:
- how inherently distinctive it is (that is, the more unusual or “fanciful” your mark is, the less likely it is that someone else would have chosen it)
- how distinctive it is in the marketplace (how famous your mark is in the marketplace and how easily customers recognize it)
To illustrate this point, here are a few examples—they’re probably very familiar:
- the pink color of insulation
- the roaring lion for movie studios that you see at the beginning of a film
- the unique shape of a soda bottle
- the sound of the 20th Century Fox clip
These are all trademarks and are easy to recognize. It allows the public and other businesses to know and trust their source.
Why Is This Important?
The more distinctive (unique) your mark is, the stronger it is. That means you will have more protection should you ever be involved in legal proceedings regarding your mark.
Bonus: Things to Keep in Mind so the USPTO Doesn’t Refuse Your Application
In some cases, when you file your trademark application, the USPTO might refuse to approve your mark. To be on the safe side, make sure:
- You are the owner of your mark (you created it and you own it)
- Your mark can actually function as a mark (it’s not a generic name like “bananas” or “boxes”, it actually has a somewhat unique design, and it’s not the title of a single creative work like a song or a novel. There are more restrictions like this and it can get a little sticky, so if you need help, check out the Artful Contracts Brand Protection Package so you can have a lawyer help you through the process)
- Your mark is not “immoral” or “scandalous”
- Your mark is not deceptive
- Your mark doesn’t disparage or falsely suggest a connection with any other entity
- Your mark doesn’t use the flag or coat of arms of the United States/any state/municipality/foreign country
- Your mark isn’t illegal
- Your mark doesn’t comprise a name, portrait, or signature that identifies a living person without their written consent
- Your mark isn’t just a last name
This is just a short list of things your application could be denied for, but there are more reasons your mark might be refused.
Filing Your Trademark Application
If you feel you’re ready to take the plunge, and you’ve kept all of the above in mind, you can file your USPTO trademark application online.
You will need to complete the initial application form, which is done through the Trademark Electronic Application System.
You may also need to use a number of other forms, such as response, intent-to-use, and post-approval forms.
Filing a trademark is a legal proceeding, and it can get overwhelming pretty quickly for anyone who isn’t an intellectual property lawyer. Thankfully...
You Don’t Need to Do It Alone!
To make sure you’re on the right path and to avoid costly troubles down the road, it’s a good idea to have a lawyer help you through the process.
It can take nearly 5 months for the USPTO to examine your application and over 12 months for registration after filing—imagine waiting all that time just to find out your application has been denied!
A lawyer can help make sure a comprehensive trademark search is done and that your mark is distinctive enough to be registered. For 1-on-1 guidance from a lawyer through the trademark process, consider the Brand Protection Package.
With the package, you don’t have to worry about having the right forms or filling in forms incorrectly. A licensed attorney will ensure everything is done correctly and that a comprehensive search is done so that your chosen mark doesn’t infringe on someone else’s.
Even if you feel your business is too new or too small to think about trademark protection (it isn’t!), there is so much to be gained by learning how to protect your business.
For other ways to protect your money and business, watch the free masterclass: How to Legally Protect & Grow Your Online Business So You Can Keep More of the Money You Make