Trademarks are apparently a mysterious thing.
Sometimes clients don’t know what exactly they want.  So, they call me to try to clarify things. They say they want to “trademark” a name. Or, they say they want to copyright or patent a name.  That’s when I must politely explain that one cannot copyright or patent a name, and indeed, you cannot even “trademark” a name.  You can, however, register a trademark.

This leads to another issue: many people, while very knowledgeable about their own business, have no idea about trademark law or trademark rights.  In case you are one of these souls, I have prepared the following for your reading pleasure:

Everything You Wanted To Know About Trademarks But Were Afraid To Ask

What is a trademark, anyway?

Trademarks are a form of intellectual property, but they are NOT interchangeable with copyright or patent. A trademark is a word or symbol that identifies the source of a product or service.

How can I get a trademark?

You obtain trademark rights in the USA by using your trademark or service mark to promote or sell your product or service. When you use a trademark that is not registered by the United States Patent and Trademark Office, you should show you claim rights in the mark by placing the TM symbol immediately after the mark, for example:

FLOOOTY™ Brand frog legs

Here, the use of the TM symbol lets the whole world know that you claim exclusive right to the mark FLOOOTY for frog legs, and other providers of competing brands must not use the FLOOOTY mark or similar marks. Interestingly, as the owner of the FLOOOTY mark for frog legs, you’d probably have a good case against a rival food company that introduced a brand of canned snails under the FLOOOTY mark.  Because frog legs and snails would probably be considered “closely related products.”

What are closely related products?

This is a big topic, but in general, things that are used together or used for the same purpose, or sold in the same channels of trade may be considered related goods for trademark law purposes.  Think shoes and socks.  Wine and cheese.  Helmets and footballs.  Snails and frog legs.  We can advise you whether your proposed trademark is too similar to another trademark for a product or service that may be related to your product or service.

Trademarks are a form of property and as such people fight over them.  This is why you should always have a comprehensive trademark search conducted before you begin using or apply to register any new trademark.  It’s called looking before your leap. It’s always a good idea.

What is trademark clearance?

Once you have selected a new trademark and consulted with your trademark attorney, had a comprehensive trademark search conducted and gotten an attorney opinion letter as to the availability of your proposed mark for use and registration, you’re ready to proceed to the next step.  Assuming the attorney opinion letter indicates the proposed mark is available for use and registration, the next step may be the preparation and filing of a trademark application.  So, in a nutshell, trademark clearance is the process of determining whether a given mark is available for use and registration.

As mentioned above, you cannot “trademark” a name. You can’t own a word.  But you can claim trademark rights to a word or phrase in connection with a specific product or service. In order to claim TM rights in a word or phrase, you need to make valid trademark use of the word or phrase you are claiming. We can provide advice about the correct way to use your trademark to promote and sell your product or service so as to establish trademark rights and maintain your trademark rights.

But what about registration?  How do I get to use ® symbol?

You can only use the little R in the circle if your trademark has been registered by the United States Patent and Trademark Office.  In order to obtain registration, you need to file a trademark application with the USPTO.  Preparing trademark applications is one of the most important services we offer.

Our firm takes meticulous care in the preparation of our clients’ trademark applications.  Attention to detail is critical.  A well-drafted TM application may proceed to registration without need for any further communication with the USPTO. This is ideal because it means the application may become registered quicker and for lower cost than an application that is subjected to challenges by USPTO examining attorneys, or that requires clarifications in order to obtain approval from the USPTO.

Can you claim a scent as a trademark?

Yes!

Can you claim a color as a trademark?

Yes!

Can you claim a musical motif?

Yes!

In fact, anything—be it visual, aural, olfactory, or tactile—that can serve the purpose of designating the source of the product or service in connection with which it is used, can serve as a trademark.

Be Aware When Looking For Help Registering Your Trademark

  • Beware if anyone other than the USPTO offers to “register a trademark.” Trademark attorneys cannot register your trademark.  If you become a client of our firm, we can prepare and file a trademark application on your behalf. We can then prosecute that application at the United States Patent and Trademark Office.  But we can’t register the trademark.  Only the USPTO can issue a registration certificate for your trademark. So, when any service provider advertises that they will “register your trademark,” you should think very carefully before hiring them. Because that terminology stretches the truth.
  • Beware of trademark “agent” services who offer a lot of pseudo legal advice while at the same time saying they are not lawyers and they cannot offer legal advice, while simultaneously saying you should consult with a lawyer.
  • Beware of trademark “agent” services who try to convince consumers that the trademark agent’s service is somehow equivalent to the service of a low cost trademark attorney.

Let Us Help You Apply For Trademark Registration

Call (914) 723-0394

About Thomas Wilentz, Trademark Lawyer

Thomas M. Wilentz is a published writer on intellectual property law who has been practicing trademark law for 18 years. His firm, Thomas M. Wilentz Attorney at Law, PLLC, was founded in 2003 and since then has helped clients from all over the USA, as well as from Canada, China, the UK, Australia, Malaysia, Mexico, Singapore and many other countries.