[A special thanks to Jeff Fabian of eTrademarkSolutions for putting together an easy to follow introduction to trademarks. There's a lot of great small businesses and ideas out there, but they don't mean anything unless they are protected. For any further questions feel free to contact him using the information listed below. - Alexandra Reed]

Insight on Selecting and Protecting a Strong Brand Identity

As with any other marketing channel, a successful third-party deal program requires development and protection of a strong and memorable trademark. Sure, you can put your deal out there, but if no one has heard of you—or if no one is sure who you are because too many competitors have similar logos and brand names—your chances of success are going to be limited. This article outlines some of the basic considerations for selecting, clearing and protecting a strong and protectable trademark.

Introduction

Trademarks are words, logos, shapes, sounds and other elements that businesses use to identify themselves and their products or services. Companies like Apple, Coca-Cola and Disney own hundreds—or even thousands—of trademarks, and they use these intellectual property assets to identify and distinguish their goods in the marketplace. Trademarks are to be contrasted with copyrights, which protect creative expressions of ideas—such as photographs, ad copy and website designs.

Selecting a Strong and Protectable Trademark

The first thing to keep in mind when selecting a trademark is that not all words and names are capable of being protected as trademarks. No one business owner can claim exclusive rights in generic terms and logos, because all business owners need to be able to use these in order to identify their goods or services. Thus, a website designer likely could not claim exclusive rights in the name “Professional Web Design”, because this is simply a generic description of the services that the business offers.

The following scale identifies the types of trademarks and the levels of protection they can obtain:

• Generic – not subject to trademark protection
• Descriptive (describes the goods/services as opposed to merely stating what they are) – protectable as a trademark only after acquiring “secondary meaning” (recognition) in the relevant marketplace
• Suggestive (slightly more cerebral than descriptive, but still identifies the goods/services on its face—think Facebook®)  – protectable
• Arbitrary (think Apple® for computers) – protectable, and subject to a greater scope of protection than suggestive marks
• Fanciful (made up words, think Exxon®) – afforded the greatest scope of protection

Each of these classifications is pretty much just as it sounds. Generic marks (such as “Cupcakes” for cupcakes) are generally not afforded any trademark protection, and descriptive trademarks (such as “Effective Legal Services” for an attorney) are only protectable under limited circumstances. Thus, business owners seeking to adopt protectable trademarks that can add value to their business should be careful to ensure that the marks they select falls into one of the other three categories.

Performing Clearance Research for Proposed Trademarks

After selecting a protectable trademark, before you start stamping it on anything and everything associated with your business, it is absolutely critical to perform the necessary research to allow you to make an informed decision as to whether or not someone else may already own “prior rights” in the mark. This is a time-intensive, research-intensive process that is best left to the professionals. In certain circumstances this “clearance” research will conclusively establish that another business has already acquired exclusive rights in your proposed trademark (relegating you back to the drawing board). In others, it will establish with a reasonable degree of confidence that the mark is available for adoption; and, in others still, it will result in a level of uncertainty that requires a strategic decision on whether or not to pursue the desired trademark.

Performing thorough trademark clearance research can also turn you on to any negative connotations or associations affiliated with the proposed trademark of which you may not previously have been aware. Does your trademark have a negative or lascivious connotation in the modern lexicon? Has a convicted fraud artist previously done business under your proposed trademark? While not directly related to legal rights in trademarks, these too are important issues that need to be considered when evaluating a proposed trademark.

Filing for Trademark Registration

Once you have selected and cleared a protectable trademark, the next step is to apply for trademark registration with the United States Patent and Trademark Office (“USPTO”). The USPTO now offers online applications and immediate credit card processing. These features are actually quite important because they allow for immediate filing, and the date of application is the operative date for determining priority of rights.

There are several critical aspects of the trademark registration application that require careful attention and consideration. One of these aspects is the description of your company’s goods or services. If the mark will be used with multiple “classes” of products or services (for example, as the name of a business that has numerous product offerings in different lines), then the application must cover all applicable classes, and each product or service within each class must be accurately described. This will also have an effect on the total cost for the application, since each class carries its own filing fee.

Importantly, you do not need to actually begin using your trademark before applying for registration. Business owners can file as many “intent-to-use” registration applications as they like—so long as they have a bona fide intent to ultimately use each trademark in commerce. This is an important benefit, as it allows business owners to claim exclusive rights before introducing their trademarks to the public (and their competitors).

Enforcing Your Trademark Rights

Finally, it is important to note that federal law actually requires trademark owners to take steps to protect their trademarks in order to maintain their exclusive rights. As a result, business owners need to take steps to proactively monitor and enforce their trademarks. This can include regular monitoring of social media sites and online databases, and other tasks designed to spot infringement and correct improper uses. Like clearance research, trademark monitoring and trademark enforcement are tasks best left to the pros.

In the long run, the relatively modest expenses of selecting and protecting a valuable trademark will be far surpassed by the benefits that a strong trademark can provide.

This article is provided for informational purposes only, and does not constitute legal advice.

Jeff Fabian is the owner of Fabian, LLC, a boutique law firm that assists business owners in protecting their brands so that they can stay focused on running their businesses. Visit eTrademarkSolutions.com for more information, or follow Jeff on Twitter @jsfabian.