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Writer's picture: Tim BradleyTim Bradley



Navigating the world of trademarks can feel overwhelming, especially when you're trying to carve out a unique identity in a crowded market. That's why I'm thrilled to share this guest post by Tim Bradley, a trademark expert, who breaks down the essentials of trademarking for emerging brands. Whether you're launching a new product or refreshing your existing brand, understanding the basics of trademark law is key to protecting your creative investments.


 

Trademark Basics for Emerging Brands

To stand out in a sea of competitors, it is important for brands to create brand loyalty

amongst their customers. An essential part of this is selecting a brand that is available

for use and is eligible for legal protection.

As a brand professional, graphic designer, or creative, you could come up with a great

name, slogan, or logo, but if it is already in use, or is confusingly similar to something

already in use, you may be inadvertently setting up your client for future headaches,

and in doing so diminish the likelihood they will want to hire you again in the future.


This article will first cover some basics about trademark law, including a discussion of

what types of trademarks are the strongest and which are not eligible for protection, and

then discuss some common trademark misconceptions, and best practices for

trademarks for brand professionals.



What is a Trademark?


A trademark is a word, phrase, symbol, or design that is meant to identify the source of

goods or services. Because of this, trademarks are commonly referred to as “source

identifiers.” The words “trademark” and “brand” are often used synonymously. Also,

trademarks are a form of intellectual property.


Some famous examples of trademarks are shown below. These are instantly

recognizable by consumers as identifying various well-known brands.



Each of these brands is well-liked in large portions of the US population, and their

unique and immediately recognizable logos help them stand out from their competitors.


Technically speaking, “trademarks” relate to the sale of goods, and “service marks”

relate to the sale of services. Thus, NIKE is a trademark for shoes (goods), and UPS is

a service mark for parcel delivery (services). However, I will just use “trademarks” or

“marks” as un umbrella term for both in this article.


The purpose of trademarks is to identify the source of goods / services, and to

distinguish them from those that come from other sources (e.g., helping consumers

choose between a Coke® and a Pepsi®).


Thus, a consumer that wants to shop at Target® should know that when they enter a

store bearing its logo, it will indeed be a Target store and not some other retail store.


Many Michigan-based companies have trademarks that are regionally well-known.

Here are some examples:


Although you may not think of these as trademarks, they are, because they identify the

source of various goods (potato chips, pizza, soda) and services (oil changes, and retail

stores).



What Makes a Good Trademark?


Creativity and graphic design clearly play a large part in great branding. However, it is

also important to be aware of potential trademark issues for a proposed name, logo, or

slogan. If a client gets sued for using your branding materials, they may blame you.


As a rule of thumb, the more distinctive a trademark is, the stronger it will be, and the

broader the scope of protection that will be available. At the same time, the more the

trademark describes the underlying goods/services being offered, the weaker it

generally is.


The chart below provides an overview of trademark distinctiveness.



Trademark Distinctiveness



The strongest and most distinctive trademarks are “fanciful” trademarks, which are

coined terms that have no meaning. This includes marks such as VERIZON, EXXON,

POLAROID, XEROX, etc. Because they have no meaning, they are inherently

distinctive, and can make great trademarks.


Arbitrary trademarks have a meaning, but that meaning is arbitrary in the context in

which they are used. For example:


  • APPLE is arbitrary for phones, tablets, and computers, but would be generic (and therefore unprotectable) for the sale of apples.

  • CAMEL is arbitrary for cigarettes, but would be generic for the sale of camels.

  • COACH is arbitrary for luxury handbags, but would be generic for coaching services.

  • AMAZON arbitrary for e-commerce services, but would not be arbitrary for services related to the Amazon river.


Suggestive trademarks are those that “when applied to the goods or services at issue,

require imagination, thought, or perception to reach a conclusion as to the nature of

those goods or services.” They give a hint of the underlying goods/services, but do not

outright describe them. For example:


  • COPPERTONE provides a suggestion of a suntan, but one would not immediately know it is a suntan lotion.

  • GREYHOUND provides a suggestion of speed, but one would not immediately know they provide bus transportation services.

  • TESLA provides a suggestion of electricity (because of Nikola Tesla), but one would not immediately know it sells luxury electric vehicles.


Descriptive trademarks are those that “describe an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or service.” For example:


  • SPRAY & WASH describes how the stain removal product is used.

  • MOTOR CITY PEST CONTROL describes that pest control services are offered in the Detroit area.

  • AMERICAN AIRLINES describes an airline operating in America.


In general, these trademarks are weak and difficult to protect.


Generic trademarks “are terms that the relevant purchasing public understands primarily

as the common or class name for the goods or services” and they legally cannot serve

as source identifiers. This makes sense, because we do not want businesses to be able

to monopolize terms that others must use to describe their goods/services. For

example, as a purveyor of hamburgers, I should not be able to claim trademarks rights

in the word “hamburger” on its own, because (1) “hamburger” is a generic term for the

class of goods being offered, and (2) other hamburger sellers need to use that term.


Context matters for trademarks. To use an example from above, APPLE, which is one of

the best known brands in the world, is arbitrary for consumer electronics, but would be

generic (and unprotectible) for the sale of apples.


Sometimes a mark may start out being descriptive, but overtime consumers start to

associate the mark with its source rather than what is being offered. For example,

AMERICAN AIRLINES, when first used, would be considered descriptive because it is

descriptive of an airline operating in America. However, over time the mark became

distinctive and consumers now associate it as a particular airline, and not just as an

airline that exists in the United States.


If a descriptive mark is adopted, the ability to enforce the trademark is very limited until

it has acquired distinctiveness, which typically involves 5+ years of use and/or extensive

advertising. Even if a descriptive mark does become eligible for protection though, the

scope of protection is generally considerably more narrow than would be the case for a

fanciful, arbitrary, or suggestive mark.



How to Establish Rights in a Trademark


In the United States, trademarks rights come from use of a trademark in commerce for

goods and/or services. Thus, if I open a restaurant called ACME in Metro Detroit, I

would build up common law rights in the mark ACME in that geographic area for

restaurant services, and I would be eligible to use the TM symbol (as in ACME TM ).


However, I would likely not build up any rights outside of the geographic area (e.g., out

of state, or in distant parts of Michigan). Also, my rights would be limited to my offerings,

and would likely not extend to different services, such as car dealerships, gas stations,

law firms, etc.


Registering a trademark with the United States Patent & Trademark Office (USPTO) (a

process sometimes informally referred to as “trademarking”) confers many benefits to a

trademark owner, including, but not limited to:


  • Expansion of rights from the geographic territory of use to the entire United States.

  • Providing notice to others, and thereby making it less likely that others will adopt the same or similar marks.

  • Providing evidence of ownership in legal proceedings.

  • Making it easier to enforce a trademark, particularly on social media and e-commerce platforms.


Thus, while use in commerce may be enough to establish some limited common law

rights, securing a trademark registration confers many benefits, and in most cases

should be pursued.


The Main Requirements for Trademark Registration


The main requirements for trademark protection can be generally summarized as

follows:


  1. The mark is sufficiently distinctive for protection

  2. No likelihood of confusion would arise among consumers through use of the mark for its corresponding goods/services.


For a thorough assessment of likelihood of confusion, a trademark attorney should be

consulted. Although anyone has access to the USPTO trademark database and can

search existing filings, and potentially even identify some obvious conflicts, it is highly

recommended to hire a trademark attorney because third party registrations can be

problematic even if the marks and/or the goods/services are not identical.


The ® symbol may only be used for a federally registered trademark.


The TM symbol, however, may be used for any trademark in which the owner claims

trademark rights, even without taking any formal legal steps. If desired, the SM symbol

could be used for services, but more often than not companies just the TM symbol for

unregistered marks.



Common Trademark Misconceptions


  1. I can “trademark” a term without using it - While one can register a trademark without use in many foreign jurisdictions, in the United States, trademarks rights come from use of a trademark in commerce for goods and/or services, and use is a prerequisite for registration. Although one can file a federal trademark application without use, ultimately there must be use in commerce before a US trademark application can register. Thus, you can get the application process started before use has occurred, but you cannot register without use.


  2. Securing a trademark registration protects the mark against anyone for anything - In general, trademark rights typically only extend to the goods/services for which the mark is used. For example, if I open a restaurant called ACME and register ACME trademark for my restaurant services, I likely would be unable to stop a third party from using the same trademark for unrelated goods and services (like car dealerships).


  3. In order to infringe, two trademarks need to be identical - Trademark infringement is assessed based on whether a consumer would be likely to be confused between the two marks for their respective goods/services, and marks do not need to be identical for likelihood of confusion to occur. For example, if I tried to use the trademark AMAJOHN for an e-commerce store, Amazon would likely have a strong cause of action against me. Or if I opened an athleisure store and called it LILYLEMON, Lululemon would also likely have a strong cause of action. Thus, just because one performs a quick search on the USPTO and does not find the exact trademark in use, that does not necessarily mean there are no other third party trademark filings that may raise issues.


  4. My trademark should describe my product or service - The more your mark describes your product or service, the weaker the trademark will be. It is much better to select a trademark that has nothing to do with your offerings, or that is suggestive (without being descriptive) of the offerings.


  5. It’s ok to select a trademark if it is a parody of an existing trademark - This is a bad idea and rarely ends well for businesses. Consider the examples below, where cannabis companies selected their trademarks based on known candy brands. Each use resulted in a lawsuit, and in both cases, the trademarks being used were not identical to their well-known registered counterparts. Although the packaging likely played a large part in the filing of the lawsuits, it is best to come up with one’s own brand and to not copy a famous one.




Best Practices for Brand Professionals, Graphic Designers, and Creatives


Working with Emerging Brands


  • Encourage your clients to be aware of potential trademark issues - While you can assure your client that your creation (name, logo, or slogan) is unique to the best of your knowledge, unless a trademark attorney has performed a trademark search on your behalf, never provide any guarantee that the mark is legally available for use. Instead, encourage your client to consult with a trademark attorney for such an analysis. Alternatively, you may consider retaining a trademark attorney yourself and bundling that service in with your price. Be sure that your client is aware of the scope – and limitations – of the services you provide. Trademark law is likely not at the top of their minds, and they may appreciate you making them aware of potential issues.


  • Make sure that improper trademark symbols are not being used in your work - If a trademark is not registered, the ® symbol should not be used. However, use of the TM symbol would be acceptable.


  • Do not mimic other brands - Do not intentionally copy a name, slogan, or logo of a well-known brand. As indicated with the cannabis examples above, this may end badly for your client. Even if flattery is intended, this is still not a good idea.


  • Avoid selecting a weak trademark or unprotectable trademark for your client - Armed with the knowledge about trademark distinctiveness provided above, avoid intentionally selecting a descriptive trademark for your client. This will make it difficult for them to distinguish themselves, and will also make it hard to establish any legal protections. Dressing up a descriptive mark with misspellings (e.g., “QWIK”) and laudatory phrases (e.g., “America’s Best”) will generally do little to make a mark distinctive.


  • Make sure your client’s trademark is used consistently - It is typically best to pick one form of a trademark, and to stick with it and avoid making many variations. For example, McDonald’s is always presented with an apostrophe and letter “s” at the end, and they do not call themselves “McDonald.” So if a mark is to be pluralized, then always have it pluralized. If there is a space between two words, always include the space. If certain letters are capitalized, then always capitalize them. If a certain font is used for a logo, then consistently use that font for the logo. Always use the trademark consistently, including the same spelling, punctuation, and spacing.


    Examples:

    • McDonald’s, not McDonald

    • Nordstrom, not Nordstrom’s

    • AT&T not A.T. and T.



Conclusion


As a brand professional, graphic designer, or creative, you may be expected by your

clients to wear many hats. Although being a trademark lawyer isn’t one of them,

maintaining a basic knowledge of trademark law can help you elevate your services and

ensure that your clients are well-equipped for success with their brands.


 

Protecting your brand is just as important as creating it. If you’re ready to take the next step, let’s chat about crafting a bold, memorable brand that turns heads. And if you’re looking for expert trademark advice, Tim Bradley is your go-to. Together, we’ll make sure your brand not only shines but is built to last!




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