What Can I Trademark?
Maybe you have already dotted your i’s and crossed your t’s with your business by registering your domain name, conducting market research, creating a business plan, and choosing a legal structure. Now everyone keeps telling you that you must get your “trademark” registered. But what is your trademark, and how do you know what elements to register when you file your trademark application with the United States Patent and Trademark Office (USPTO)?
A trademark can be any word, phrase, symbol, design, or combination of these things that identifies your product or services. Your trademark is how your customers recognize you in commerce, and it is what distinguishes you from your competitors. The purpose of a trademark is to protect consumers from being confused about the source of the goods or services in the marketplace and also to protect the goodwill that the merchants have developed in their trademarks.
You may only choose one variation of your trademark for each trademark application.
That being said, you may file for multiple versions of your trademark for the same goods or services. A famous example is Nike, Inc. and its ownership of numerous trademarks in connection with footwear in International Class 025. It owns the famous “swoosh” logo as well as the catchphrase “JUST DO IT” and the word mark “NIKE.”
If you are a new business just starting out, the important question to ask is: How are you consistently representing your brand to your customers?
A word mark is the most common type of trademark registered by businesses. A word mark, or a standard character application, is an application that consists of wording without regard to style, design, or any graphic elements. It offers the most broad form of protection and only protects the wording of your brand. When you apply for a word mark, you can change the design aspects of the mark (e.g., font, upper or lower case, style) and still maintain the registration.
Alternatively, you may decide that the design portion of your mark is an integral part of your brand. Maybe you have a logo, or you are using your logo and the word portion of your mark consistently together. In that case, you may consider filing for a design mark application. The filing fees will remain the same per class of goods or services, regardless of whether you file for a word mark or a design mark.
The downside to filing a design mark is that the placement of the words in the design DOES matter. If you have your brand name to the right of your design but then decide to change it to the left, this will be considered a material alteration by the USPTO, and you will have to refile the trademark with the new orientation.
The USPTO also permits the registration of unique marks such as sound marks if they serve as distinctive identifiers. The Pillsbury Doughboy giggle owned by The Pillsbury Company, LLC, and the American Online “You’ve got mail,” sound are both registered trademarks.
A scent can also be registered if a trademark passes the smell test. Quite literally, a trademark examiner must receive a sample of your product in order to determine that the fragrance serves no important practical function other than to help identify and distinguish a brand.
Trademarks can also be solely based on color. A well-recognized example is Tiffany & Co.’s use of the robin egg blue color.
Other unique trademarks can be texture marks that are based on the tactile feel or texture of a product, motion marks that include movement (such as the MGM lion’s roar at the beginning of movies), and position marks that involve the specific placement of a logo or design element (e.g. the red sole of the Christian Louboutin shoes).
The USPTO offers applicants ample opportunity to establish unique brand identities. Understanding these options is important for selecting the right trademark strategy to protect and promote your business in the marketplace effectively.
