For any business entrepreneur, intellectual property is key. How will a business build value if not through protecting its valuable assets? Thus, intellectual property is something that needs to be protected. This is the purpose of trademark law, which allows to register and protect trademarks. So, what types of marks can be registered? What is the registration process? Why register at all? Is it really needed to protect your marks?
What’s eligible for registration?
In applying for a trademark registration, the material generally consists of a mark, some sort of drawing or another non-conventional mark. For example, the McDonald’s “Golden Arches,” the Apple logo, or even a single color, under certain circumstances can be registered. While there used to be restrictions on the manner of the mark in regards to immoral, deceptive, or scandalous marks, it has recently been placed into question on constitutional grounds. As such, offensive names are more likely to be approved now, although, there has not been a final decision in some cases.
In addition, a mark must be distinctive and distinguishable. However, it is not necessary for an individual entity to have created the mark in a way that is fanciful or unique, so long as it meets those other points (e.g., Brexit Beer or Apple computers).
How does one register a mark?
After coming up with or acquiring a mark for trademark registration, an individual or entity should go through the registration process. The next step is a “clearance search” to determine if the mark is distinctive and distinguishable from other marks. For example, if someone wanted to use the mark “Speed Silver” in clothing, it may be too close to “Quicksilver” to get approval. Similarly, some marks may be distinguishable in some markets, but not others, like a clothing company’s mark may not be confused with hardware. The point in this is to avoid the confusion customers may experience, protecting them, while also rewarding those brands that have taken time and effort to create a reputation for themselves.
Once you’ve determined that a mark is clear, the next step is filing for the registration. One registers a mark by filing it with the USPTO, or with a state agency (e.g., California’s Secretary of State) depending on the type of protection that is necessary. A federal trademark comes with more protections, as inclusion in the main and supplemental registry have the potential to put some protections in the mark worldwide, but come with the additional burden of engaging in interstate commerce. In general, state trademarks are limited in territory, but may be better for businesses that intend to remain local.
California’s application can be found online and sent by mail to the Secretary of State. For federal trademarks, it can be completed online. This gives entities a variety of options, including, but not limited to, the intent to use applications, which hold a trademark while it is being produced, and not yet in market. Generally, these applications require entities to list the entity type, the first use in commerce, a sample of the mark, class of goods/services the mark will be associated with, and how it will be used in commerce.
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