Putting in place an internal procedure that includes consensus on who will be engaged and how the mark should be selected is critical to success in choosing names and trademarks. If at all possible, company officials should determine what message the new mark is meant to convey to consumers, as well as how that message fits into the company’s overall marketing plan and/or mission. (Branding consultants are occasionally engaged to assist in the management and are informed of this process, but they are not required.)
Following such an extensive process, stakeholders typically want to know if they may register the new branding as a federal trademark.
Here are the Five checklists for selecting the trademark:
1. Mark Must is “Distinctive” To Be Protectable
In order to get trademark rights, the chosen mark must be sufficiently “distinctive.” Because they do not serve as source indicators for customers, merely descriptive or generic words or phrases are not protectable as trademarks.
To put it another way, a restaurant will never be able to claim exclusive trademark rights to the phrase “RESTAURANT” and so prevent competitors from using it. However, because “EXXON” is a completely made-up term with no conventional meaning, it can easily be identified as a source identifier or trademark. The word “EXXON” is protected, while the word “RESTAURANT” is not.
2. The First User of a Mark ‘In Commerce’ ‘Wins’ Exclusive Rights
In general, the first to provide goods and services in the United States under a mark has the exclusive right to use that name or phrase as a trademark– at least in the geographic area where the first user operates. The first user has the right to prohibit others from using confusingly similar marks on items or services that are identical to the first users. However, see point 3 below for a notable exception to the concept of being the first user “winning” exclusive rights.
3. Filing to Register a New Mark Should Be Considered
While the registration of a new mark isn’t the most crucial factor to consider, registration should be thought of as a way to alert the public to your claims to a new mark. If the company’s use of the mark in commerce (see point 2) will not begin for some time, filing an application can be beneficial. In the United States, if you file an application to federally register a mark before someone else has begun to “use,” the first filer “wins” the race to exclude others, even though the first filer is not using the mark at the time of filing. That is, if someone files to protect the mark before the first user uses it, the first user may lose the ability to exclude others.
4. You Must USE the Mark to Exclude Others and Maintain Rights
All rights in U.S. trademarks are derived from their use in commerce. Again, this “use” requirement often entails actually selling goods and services under the mark in the United States. In reality, the United States Trademark Office will not grant a U.S. applicant trademark registration until the product is sold, shipped, and/or the claimed services are promoted and rendered. Furthermore, any trademark rights that the owner may have may be lost if use ceases for an extended length of time (usually 3 years).
5. Identical Marks May Coexist as Long as There is No Consumer Confusion or Dilution
Finally, marks that are identical or similar to one another may be used simultaneously by various users as long as there is no risk of confusion in the marketplace. This short post cannot go into detail about what defines “likely of confusion” and “trademark dilution.” Nonetheless, the marks may coexist as long as consumers are not confused as to whether the two users are linked. There are numerous examples of such marks (ex. DOVE for soap and candy and ice cream; DELTA for an airline and plumbing supplies, etc.)
Maintaining awareness of these concerns might help avoid the disappointment of learning that a freshly chosen brand cannot be protected as a trademark. Of course, many of these concerns necessitate non-intuitive analysis (e.g., how relevant can a phrase be before it becomes descriptive and non-distinctive?), so it’s critical to include your legal team as early as possible in the new brand selection process.