Trademarking a Name and Logo In the US

Introduction

If you’ve come up with a great name or logo for your business, it’s important to protect your intellectual property by registering the mark with the United States Patent and Trademark Office (USPTO). Trademarking a name or logo offers several benefits.

What is a Trademark

A trademark is a form of intellectual property. It is used to protect the brand identity of a company or product. In order for a trademark to be registered with the U.S. Patent and Trademark Office (USPTO), there are certain criteria that must be met:

• The mark must be unique and/or original, so it cannot simply be based on an existing word or phrase in English or another language; nor can it be descriptive of the goods or services being offered;
• You must have evidence that this mark has been used in commerce (for example, as part of your business); and
• You’ll need to select which category best describes your goods or services (e.g., clothing, toys), whereupon you may then choose from several more specific subcategories within those broad categories (e.g., clothing – accessories).

What can be Trademarked

To be eligible to register a trademark with the United States Patent and Trademark Office (USPTO), the mark must be:

• Distinctive – Unambiguous and instantly recognizable as being connected to your business or brand — meaning it is not just descriptive of what you sell but also symbolic or suggestive of it;
• Functional – The purpose is to distinguish your products or services from those sold by others in their marketplace. A mark can become functional when it becomes widely known as uniquely identifying a particular product or service on the market;
• Not likely to cause confusion with other registered trademarks – If two marks are similar enough that consumers might confuse one for another when shopping for products, then neither should receive protection under trademark law.

Word Marks (e.g., brand names)

A word mark is a name, slogan, or phrase that is used to identify a product or service. A word mark can be a brand name (e.g., Nike or Apple), or it may be a descriptive word or phrase that describes the product or service (e.g., “The Best Shoes”). In either case, the key test in determining whether something qualifies as a trademark is whether consumers are likely to think of one company when they hear someone use the term.

Descriptive Words or Phrases (e.g., smartphone)

Descriptive words and phrases are not inherently distinctive, but they can become so through use in association with your goods/services. For example, if you sell smartphones under the trademark name “Smartphone,” it would be difficult to register this mark because the smartphone is descriptive of what you sell (i.e., phones that are smart).

Slogans (e.g., Just Do It)

Slogans are often more successful in registering as trademarks than word marks. They are typically short and memorable and can be used in a wide variety of contexts. Slogans can be registered as trademarks if they have acquired distinctiveness from the use by the applicant and others to identify the source of goods or services provided by your company.

Symbols and Logos (e.g., Nike swoosh)

Symbols and logos (e.g., Nike swoosh) must be unique and not confusingly similar to other marks already registered with the USPTO. A symbol or logo can also be used in combination with a word mark, as long as it is used consistently and uniquely for the same goods or services that are identified by the word mark.

Sound Marks (e.g., M·A·C’s phrase mmm…)

Sound marks are a form of trademark that consists of a sound rather than just a word, phrase, or logo. In the United States, only about one percent of all trademarks are sound marks. Unlike other forms of trademark, which can be used to identify any type of product or service (for example “Apple” identifies computers), sound marks must be distinctive from the sounds used by others in their business.

For example, M·A·C’s phrase mmm… you’ve got the look which plays on their website when you click the play button is not just words describing a product but actually sounds that consumers associate with M·A·C cosmetics and make up products.

Combination marks (e.g., a word mark combined with a symbol or logo)

A combination trademark is a mark that includes a word mark and a symbol or logo. These types of trademarks can be more difficult to register than single-word marks, but they are also more difficult to protect.

For example, Target’s name and bullseye logo are both registered as trademarks. If you were to create an online store called Target Online (with no other “trademarked” elements) you would be infringing upon their trademark rights because your use of their name combined with the use of their logo would confuse consumers into believing that your online store was affiliated with them.

If you wish to create a combination trademark for yourself, we recommend registering both parts separately first because this will make it easier for you to defend against any infringement claims later down the road if necessary.

Conclusion

There are certain products that are in such demand that they have become generic, meaning they can no longer be trademarked. For example, a company named Microsoft may not be able to trademark the word “computer” because it has become generic. An important part of registering your product name and logo as a trademark is making sure that it is unique enough so that no other company or individual has already claimed ownership over it or similar variations on spelling/pronunciation.