In the business world, it’s hard to overestimate the power of a strong trademark. From Nike’s Swoosh logo to Mercedes-Benz’s three-point insignia, the right mark can forge an emotional connection with customers. If you’re looking into registering a trademark yourself, here’s a quick refresher on which IP assets qualify for this protection and how to do it right.
What Is a Trademark?
A trademark is a symbol or sign that represents a brand and helps identify its products or services in the marketplace. The most popular trademarks are By protecting a trademark, a business protects all the hard work and investment that went into building its brand. Every successful brand is built on at least one trademark.
Registering a trademark prevents anyone else from using it for their own purposes. The United States Patent and Trademark Office (USPTO) is the agency that registers trademarks at the federal level. Marks may also be subject to registration in the state where it is in use or under common law although the protections tend to be somewhat more limited.
What Can Be Trademarked?
Under U.S. law, you can register almost anything as a trademark. In addition to names, phrases, and logos, trademarks may also include aromas, colors, letters, numbers, packaging designs, and sounds. Indeed, anything that becomes or is an identifier for your business, products, services, and the like may be subject to trademark protection. Trademarks that are considered generic are not subject to registration in the USPTO. Also, not all trademarks enjoy the same level of protection. The extent of protection depends on how strong the trademark is, which is mostly based on its distinctiveness.
What Can’t Be Trademarked?
Contrary to popular opinion, an IP asset that’s protected by a patent or copyright can also be trademarked. As long as the subject matter fits the eligibility criteria, you can protect it in many ways. That said, different forms of IP can have very different objectives. For most businesses, combining trademarks with other forms of IP protection would be a redundancy.
As for logos, names, and similar assets, there are several provisions that could prevent trademark registration. These include:
- Deceptiveness: Marks that could mislead the public
- Lack of distinctiveness: Terms that literally describe a product (beer, tomato, etc.)
- Likelihood of confusion: Marks that are too similar to already registered marks
- Profanity or vulgarity: Terms that the public would find obscene or offensive
- Government association: Words or imagery associated with the government
How to Protect a Trademark
Trademark protection has its limitations. Beyond registering a trademark, the owner must keep the trademark protected or else it could be subject to being considered to have become generic. The most common way of maintaining a trademark is to keep using it to sell or advertise products or services. Even if the mark enters common use (such as Aspirin or Nylon), making an effort to protect it could result in the trademark continuing to be upheld in courts.
It also helps to be vigilant when it comes to policing non-authorized use of your trademarks. This process starts with sending a Cease and Desist letter. Cease and desist letters should be considered in those instances when the trademark seems to be gaining notoriety in association with other products or services that are similar to where your use of the mark continues.