Trademarking Your Product - Picking a New Name. Episode 69

(This episode first aired in 2019. The trademark search system (TESS) at the United States Patent and Trademark Office is not longer "TESS" and has significantly changed.)

A Step Back: Why Register a Trademark?

After reviewing my episode from last week, I realized I may have jumped the gun on a few things. I know I don’t want trademarking to become a major focus of this podcast, but last week I discussed choosing a name that is at least suggestive of what your product is rather than just descriptive. However, I didn’t really explain why you would want to register your trademark in the first place. Let me take a step back and clarify the importance of registering your trademark.

Whenever you start using a name for your product—as long as that name is more than just a description (and sometimes even if it is descriptive)—you are using that name as a trademark. This means people associate the mark with the origin of the goods, identifying it as your business's product. You don’t need to register a trademark to have some rights. As soon as you start using it, you have what are called common law rights.

Limitations of Common Law Rights

The main issue with common law rights is that they are limited to the geographic region where you are using the trademark. For example, if you sell a product called "Bumpler" only in Los Angeles, and it's a stapler that works by bumping it, you would have the right to stop others from selling a product with the same name in Los Angeles or in surrounding areas where you would reasonably extend your business. However, if someone starts selling a product called "Bumpler" in Phoenix, Arizona, there is nothing you can do to stop them. Common law rights only allow you to prevent local businesses from using an identical or similar mark that would confuse customers. Most businesses, however, want to sell their products nationwide or even worldwide. Once you start using your mark, even if you don’t register it, you should use the TM symbol. This differs from an R with a circle around it (®), which can only be used if your mark is officially registered.

The Advantages of a Registered Trademark

Having just a common law trademark limits you because you can only stop people in your geographic location from using it. If you obtain a registered trademark, however, you gain nationwide protection, meaning you can prevent others across the United States from using the same mark.

Another advantage of a registered trademark is that it makes lawsuits more financially rewarding. If your trademark is registered, you may be eligible for statutory damages, which means you don’t have to prove actual lost profits. You simply need to show that someone used your mark, and you can recover damages. There are also ways to increase the amount you receive if you can demonstrate that the other party willfully infringed on your mark. This, however, goes beyond the scope of this short episode.

If you only have a common law trademark (meaning you haven’t registered it), you would have to prove that you lost profits due to someone using your mark. This can be difficult because it requires showing that the lost profits were directly caused by the infringement rather than other factors, such as decreased consumer interest or a lack of advertising.

How to Obtain Nationwide Protection

To get nationwide protection, you must sell or conduct business across state borders. This is a key requirement. As long as you sell your product in at least two states, you can register your mark, preventing others in any state from using the same mark. If you do not register your mark, you will likely only have common law rights in those two states.

Nationwide trademark protection and the ability to sue more effectively are the two primary reasons for registering your trademark.

Trademark Classification and the Importance of Choosing the Right Name

In my last episode, I discussed selecting a name that is at least suggestive rather than descriptive. You may also want a name that is arbitrary or fanciful. Since then, I realized I needed to correct something from my previous episode. My daughter showed me her toys, and it turns out that Pikmi Pops look like popsicles, and you "pick" them. Originally, I said the name was arbitrary, then fanciful, but I now see that it is actually suggestive.

This example highlights an important point: the type of trademark you have depends on the class of goods it marks. If "Pikmi Pops" were the name of a new TV brand, it would likely be fanciful. However, for a toy that resembles a popsicle, it is probably suggestive.

Trademarking Words, Numbers, and Common Terms

This reminds me of a talk I once gave where someone asked, "Can you trademark a number?" My first reaction was, "No, you can’t trademark a number." Then he mentioned Google, which is actually based on the mathematical term "googol" (a 1 followed by 100 zeros).

I thought about it and initially dismissed it since Google is spelled differently than googol. However, this led me to another question: "Should you be able to trademark a fruit?" At first, you might think no, but consider Apple. They trademarked the name of a fruit. The key point here is that trademarks only grant rights to a name in relation to specific classes of goods and services.

Apple holds trademark rights to "Apple" for computers and related products, but that doesn't prevent people from using "apple" in other contexts. Similarly, Google has rights to "Google" for search engines and other computer-related services but not for unrelated industries.

Conducting a Trademark Search

Before choosing a name, you must conduct a trademark search. To check U.S. trademarks, go to the United States Patent and Trademark Office's (USPTO) Trademark Electronic Search System (TESS). You can find it easily by searching for it online.

On the TESS website, you will see options for different types of searches. To keep things simple, choose the "Basic Word Mark Search (New User)." Enter your desired trademark and review the results. If a name is already registered in the same category as your product, it is best to choose another name.

The Importance of Proper Searches and Legal Assistance

Trademarks can be rejected if they are similar to existing marks, even if they are not identical. For example, if "Shopkins" is already trademarked, you might think "Chopkins" would be allowed, but that may still be too similar. This is why different search techniques are useful. You can use wildcards like an asterisk (*) or a question mark (?) to find similar names.

However, trademark searches can become complex, which is where attorneys and specialized search companies come in handy. Trademark search firms provide comprehensive lists of potential conflicts, while attorneys can offer legal opinions on the likelihood of approval and help develop a strategic approach.

It is far better to invest a few hundred or thousand dollars in a trademark search than to spend hundreds of thousands on rebranding after receiving a cease-and-desist letter or facing a lawsuit.

Conclusion

Next week will likely be my last episode on trademarks for a while. I will discuss the actual process of registering your trademark. I’m Adam Diament, and until next time, keep on inventing!