Protecting your trademark is an important part of your business. Your trademark represents the good will of your business and distinguishes you from competitors in the same industry.
Choosing your trademark – The first step for your business is to research and decide on a name. A trademark is a name that you and the public use to distinguish your business. A trademark can even a sound (IBM) or a color (UPS) or even a smell (the smell of fresh cut grass). When choosing your trademark, the mark should not be generic. A generic mark merely describes the goods or services that your business provides. Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001); In re Am. Fertility Soc’y, 188 F.3d 1341, 1346, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). These terms are incapable of functioning as registrable trademarks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register. For example, the name TACO STAND for a a taco stand, or MAID SERVICE for a maid service. Generally a generic mark can never be used as a trademark. Further, even marks which start out as good trademarks can become generic through use. A good example of this is ASPIRIN, which was originally a trademark of the Bayer company. Likewise, ELEVATOR. These marks became so engrained in the conscious of the consumer that they lost the ability to identify the company providing the goods and lost their ability to be trademarks. Now, ASPIRIN is used by all companies.
Likewise, a mark that merely describes the goods or services of your company can generally not be a trademark. To be refused registration on the Principal Register under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), a mark must be merely descriptive or deceptively misdescriptive of the goods or services to which it relates. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) (APPLE PIE held merely descriptive of potpourri); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY held merely descriptive of lodging reservations services); In re MetPath Inc., 223 USPQ 88 (TTAB 1984) (MALE-P.A.P. TEST held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979) (COASTER-CARDS held merely descriptive of a coaster suitable for direct mailing). Similarly, a mark is considered merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). It is not necessary that a term describe all of the purposes, functions, characteristics, or features of a product to be considered merely descriptive; it is enough if the term describes one significant function, attribute, or property. In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219; In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services,” citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); Gyulay, 820 F.2d at 1218, 3 USPQ2d at 1010; In re Cox Enters. Inc., 82 USPQ2d 1040 (TTAB 2007) see also In re Omaha Nat’l Corp.,819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987) (rejecting argument that descriptiveness should be limited to a quality or characteristic of the service itself and holding that it includes a designation descriptive of the service provider). A merely descriptive mark. An example of a mark which is merely descriptive would be DIAL-A-MATTRESS, which describes a service whereby you can call the company to have them deliver a mattress. Descriptive marks, however, can become registrable as trademarks if through use and advertising the marks become distinctive in the minds of the public. This is what is referred to as secondary meaning.
The best marks are what are referred to as arbitrary marks, which have no direct relation to the goods or services provided. An example would be APPLE for computers. While APPLE has a common meaning – it is a fruit, it does not in anyway describe computers. Similarly, there are marks referred to as fanciful marks, which are trademarks created only to serve as a trademark, such as EXXON, OR KODAK. These marks have no common meaning, but do serve to distinguish the goods or services of the respective companies.
In the middle of the spectrum would be a suggestive mark; one that merely suggests in the consumers mind what your companies goods or services are. An example of a suggestive mark would be MICROSOFT for software for microcomputers. The name does not directly describe the product but subtly suggests it. Suggestive marks can be registered as trademarks.
Once you have come up with a name, it is then important to insure that no one else is using that name. A good first step would be to search for the name on common search engines such as GOOGLE or FIREFOX. Thereafter, it would be wise to search on state corporation websites, such as SUNBIZ.ORG in Florida. These sites allow you to search for companies using the name. You should also do what is called a knock-out search of the United States Patent and Trademark Office Trademark Database to see if someone has applied for or has registered the name you wish to choose. You can also search for the name as a domain name on various sites including the WHOIS website.
After this, it is important to hire a lawyer to obtain a full trademark search report. Numerous companies provide these reports. The reports consist of all references to the name that are obtained from a wide variety of databases, including those listed above. The attorney would then review the search report and provide a written search report opinion letter describing the likelihood that another individual or company is using the mark. The lawyer will usually couch the report in language such as “no search can be considered completely exhaustive and there may be other marks not revealed by the report which could be used object to your use and registration of the mark”. However, if you get the ultimate ok from the lawyer, it is probably alright to apply for registration of the mark.
The foregoing searches and opinion letter are important. The penalties for using another’s trademark can be serious.Trademark owners can sue you under the Lanham Act for injunctive relief, destruction of your goods and advertising, monetary damages, including all of your profits from using the mark. Attorney fees and costs are also recoverable.
A better mark than a suggestive mark would be