Today’s tech enabled world offers unlimited potential for entrepreneurs, with people of all ages and backgrounds embracing business ownership. It’s exciting to start a business, but even the most optimistic among us may find some aspects of it intimidating. Intellectual property and associated concepts, in particular, can be confusing for an entrepreneur or small business owner. They will have questions about things such as what can be trademarked.
In this article, we’ll provide a basic overview of trademarks and answer some of the most common questions we get on the topic:
- What can be trademarked?
- When should you trademark your product or service?
- How can you get started with trademark filing?
1. What Can Be Trademarked?
So what can be trademarked? A trademark, according to the United States Patent and Trademark Office (USPTO), is a “word, phrase, symbol and/or design that identifies and distinguishes a source of a particular set of goods from another.” Services also fall under trademarks, and the word, phrase or design that distinguishes the source of the service is called a service mark.
Some examples of trademarks include the McDonald’s ‘arches’ symbol, Nike’s famous ‘swoosh’ logo, and Apple’s iconic ‘bitten apple’ logo. In addition, while it’s rare, some colors can be trademarked. Luxury jeweler Tiffany & Co.’s famous “Tiffany Blue” color is registered as a color trademark.
For the purpose of distinguishing what each protects, it’s important to briefly mention copyrights and patents. A copyright protects original works of authorship, such as literary, musical and artistic works. A patent gives the holder the right to exclude others from making, using or selling a particular invention without the inventor’s consent. Watch the video below for more information on what can be trademarked.
2. Should You Trademark Your Product or Service?
Business owners often wonder if there’s a need to trademark their goods and services, particularly if they have incorporated a business or secured a website with the business name. Neither of these offers federal trademark protection.
There are usually some common law protections available at the state level without officially filing for a trademark. However, there are many benefits to filing federally. It allows a business to sell their product freely and build their brand, which is often critical to success in the age of digital and social media. In addition, another business could come along and file a trademark for a similar product and name. This could affect the business owner who chose not to file the trademark, as the USPTO can deny a trademark based on “likelihood of confusion” with an existing mark. Therefore, it’s often to a business owner’s advantage to file the federal trademark.
3. Getting Started with Trademark Filing
Suppose you come up with the perfect name for your new bakery business and want to trademark it. Before you order promotional items with your desired name and logo, it’s a good idea to see if there’s an existing business with the same name and similar products. As discussed earlier, the USPTO can deny a trademark if it’s likely to be confused with an existing mark. Filing fees aren’t refundable, so it’s best to minimize any reasons an application could be rejected by performing due diligence.
You can search the USPTO’s database for existing marks and designs. The database allows users to search for specific names or word combinations in the basic query. For users who want to do an expanded search, the system has the ability to search a wide range of fields. Try to search multiple combinations of a name. For example, if your bakery’s name is “Deb’s Delights,” be sure to search “Debbie’s Delights,” as well as other variations of that name.
You should also search the internet for businesses with similar names. You want to avoid filing a trademark that they reject for being too similar to an existing mark. There are also companies which offer trademark search services.
It should be noted that the USPTO trademark filing does not apply to international trademark protections. This process occurs under a treaty known as the Madrid Protocol.
Once you’ve performed the search and decide to move forward with filing the trademark, you’ll need to begin the process here.
a. Trademark Filing Concepts: Basis
One of the decision points on the trademark application pertains to the basis for filing. Here, the USPTO is asking whether the goods or services are currently “used in commerce,” or whether there is an “intent to use.” If the goods or services are already being sold with your mark, then you will need to provide documentation of this fact but will file as “use in commerce.” If you haven’t used the mark in the selling of your goods or services, the filing basis would be “intent to use.” By filing in this manner, you’re indicating your intent to use the mark in commerce. Oftentimes, a business has many of the components set up but isn’t quite 100% market ready. Note that the “intent to use” filing basis has additional fees and filings to convert the application to “use in commerce.”
b. Trademark Filing Concepts: Class
Class, or the way the USPTO identifies goods and services, is another important field on the trademark application. There are 45 classes, with classes 1-34 for goods, and 35-45 for services. A listing of the classes can be found here.
It’s important to identify the proper class of your goods or services. The USPTO will generally examine whether a mark for similar goods already exists in a class. This is one of the primary reasons the USPTO denies an application, so it’s important to ensure your mark and class are unique or novel enough to pass scrutiny.
c. Trademark Filing Concepts: Identification of Specific Goods and Services
In addition to class, the USPTO also requires you to be specific about the items you are currently selling or intend to sell using your mark. There’s an “ID Manual” which lists thousands of goods and services, and this is what you’ll use to help identify the specific items you’re selling in a class. For example, if you’re selling coffee drinks, you would file using class 30, and would list “coffee drinks” in your description. If you also sell coffee beans, unroasted coffee, and tea, you would list these items in your description as well. Descriptions can be tricky – it may be possible to reduce the number of specific goods and services in a description if the USPTO has issues with your application, but you’re not able to expand your listing. Any new goods and services would likely require a new application and separate fee.
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The process of filing a trademark can be daunting for small business owners. This article touches upon some high-level concepts such as what can be trademarked, but there are many free resources available. For more information on trademarks, check out Chapter 4 of our free interactive ebook, The Intangible Advantage, and Sections 8 and 9 of our free online course Intellectual Property: Inventors, Entrepreneurs, Creators.
Disclaimer: Nothing in this article shall be construed as legal advice, or as creating an attorney/client relationship.
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The Michelson Institute for Intellectual Property, an initiative of the Michelson 20MM Foundation, provides access to empowering IP education for budding inventors and entrepreneurs. Michelson 20MM was founded thanks to the generous support of renowned spinal surgeon Dr. Gary K. Michelson and Alya Michelson. To learn more, visit 20mm.org.