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3 Things You Need To Know If You Want A Trademark

Protecting your brand is key to maintaining a thriving business. Fortunately, the United States federal and state governments provide a means to protect your brand in the form of a trademark (or service mark). A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. Trademarks put businesses at a competitive advantage because it assures consistent quality of products and/or services, which leads to greater customer satisfaction and higher sales. (Yay for higher sales!) Here are three things that you need to know if you want a federal trademark.

#1 You must actually be using the mark before you can register the trademark

Many people think that you can just register a trademark for a catchy name or slogan that you thought of, but that's actually not true. Trademark registrations are reserved for marks that are actually used in commerce. The Trademark Act defines "use in commerce" as a bonafide use of a mark in the ordinary course of trade. The most common way to meet the use in commerce requirement is by selling your product or service to consumers. In other words, you must be using the mark (name, logo, slogan, etc.) in connection with the sale of your product or service. When you file the trademark application, you will have to provide evidence that you are using the mark in commerce.

One thing worth noting is the intent-to-use trademark application. An intent-to-use application comes in handy when you have not yet used the mark in commerce, but you want to reserve the mark because you plan to use it in the near future. With an intent-to-use application, you must file a Statement of Use within six months (unless granted an extension for good cause), or else your application will be considered abandoned.

#2 The more the mark describes your product or service, the harder it is to get a trademark

There are five categories of trademarks - generic, descriptive, suggestive, arbitrary, and fanciful. Each of these categories provide for different levels of trademark protection. This spectrum starts with generic, which affords no trademark protection, to fanciful, which provides the greatest level of protection. It is important to note that the more your mark describes your product or service, the harder it is to get a trademark. Here's what I mean:

A generic mark is a word or symbol that is commonly used to describe an entire type of product or service rather than to distinguish one product or service from another.

Example: "The Salon" for beauty parlors.

Generic trademarks are not eligible for trademark protection because it wouldn't be fair to prevent others in the same industry from using generic industry words for their product or service.

A descriptive mark describes the service or product it is attributed to.

Example: "Cheesy Pies" for a pizza shop.

In order to receive a trademark for a descriptive mark, it must become distinctive by acquiring “secondary meaning”. Secondary meaning is achieved when the mark, through advertising or other exposure, has come to signify that a good or service comes from a particular source. Before a descriptive mark can obtain trademark protection, enough evidence must be gathered and submitted with your trademark application, to the satisfaction of your trademark application examiner, to prove that your mark has acquired secondary meaning. This can be a challenging task.

A suggestive mark refers to some characteristic of the goods, but requires a leap of the imagination to get from the mark to the product. It doesn’t exactly describe the product or service, but with some thought, consumers can likely figure out the creative connection between the mark and the product or service.

Example: “Penguin” for refrigerators. Penguins are associated with cold environments, and so are refrigerators.

Be careful not to categorize your mark suggestive when it is actually descriptive. The trademark examiner makes the final decision. No secondary meaning is required for suggestive marks, but it is required for descriptive marks.

An arbitrary mark is a common word or phrase, but the meaning of that particular word or phrase is not related to the good or service.

Example: "Apple" for computers.

No secondary meaning required.

A fanciful mark gets the strongest trademark protection because the brand name or logo is a made up word or image by the brand owner and therefore, the sole meaning and association is dependent upon that good or service.

Example: "Kodak" for photography.

No secondary meaning required.

The closer your mark is to an arbitrary or fanciful mark, the easier your application process will be.

#3 Beware of common law trademarks

Just because someone else doesn't have a federal or state trademark for a name or logo that you want to use, or are using, doesn't mean it is available for you to exclusively own or fully protect. Under common law, trademark rights within a certain territory are granted to the first to use a mark within that territory, even if it is not federally registered. Sometimes a federal registrant is not the first user of a mark in a territory, and therefore, an unregistered prior user of that mark may have superior rights in that territory. In other words, even if you have a federal trademark, there is a possibility that you may not be able to stop someone else from using that same name or logo if they were using it in commerce in a certain area before you were.

For example, if you are granted a federal trademark for the name "Best Body Fitness" in 2016 and someone in Tennessee has been using that name for 15 fitness centers throughout that one state since 2007, then you will likely not be able to prevent that person from using the name despite your federal trademark. In fact, they may even be able to prevent you from using the name in Tennessee. So although a federal trademark registration generally gives you the right to protect your mark throughout the entire country (and U.S. territories), you may be unable to prevent someone else from using the same mark if they have common law rights. This is why a comprehensive trademark search is highly recommended for an individual or business that wants to start using a particular name or logo. Check for common law trademarks before you invest in your brand.

Don't let the legal aspects of entrepreneurship intimidate you! Join my "Be Your Own Boss" mailing list for free tips, tools, and videos to help you understand and implement the business and legal basics for your entrepreneurial journey. Join "Be Your Own Boss" now!

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