How to Choose Trademark-able Brand Assets
You’re ready to secure your business with trademarks, but may wonder what potential brand elements are the best candidates for trademark protection. While a trademark can protect your business name, logo, or certain other elements that distinguish your brand from others in the marketplace, some brand assets are stronger candidates for trademark protection than others.
A federally registered trademark can help you build equity and credibility within your industry, potentially leading to greater business opportunities and more revenue down the road. Strategic thinking around trademark-able assets is an important part of your brand strategy. Start your registration process strong with a well-chosen, distinctive, and original brand asset that represents your business. By investing the time and effort into selecting the right trademarks from the outset, you not only enhance your brand’s market presence but also lay the groundwork for long-term growth and protection. Working with a trademark attorney early in the process can support the strength of your brand identity. If you want your assets to be poised to maximize your business's potential, this is a step you will not want to overlook.
Key Characteristics of Trademark-able Brand Assets
So, what brand assets are a strong candidate for trademark protection? What characteristics should you look for when determining which assets to register for trademarks? Distinctiveness and originality are the keys to trademark-able brand assets. Unique, non-generic assets strengthen brand identity and are more likely to be approved by the United States Patent and Trademark Office (USPTO) than generic, non-distinct assets.
The USPTO defines strong trademarks as “inherently distinctive”, further defined as:
Fanciful trademarks: made-up words that don’t have any meaning except for the specific products or services they represent. For example, "Exxon®" for oil or "Pepsi®" for soda.
Arbitrary trademarks: real words, but they have no connection to the products or services they represent. For instance, "apple" wouldn’t work as a trademark for an apple farm, but "Apple®" is a registered trademark for computers because it’s unrelated to the fruit.
Suggestive trademarks: words that hint at a characteristic of the product or service without directly describing it. "Coppertone®" suggests that using their suntan lotion will give your skin a coppery glow, but it doesn’t outright say that.
In the context of brand assets, distinctiveness means how easily a brand asset can be recognized and differentiated from others in the market, how well it stands out without being descriptive of the product or service, and how creative or arbitrary it is in relation to the business it represents. A coined term like "Xerox" for a brand of copiers is highly distinctive because it is a made-up word with no prior association to copying or printing services.
Distinctive brand assets are stronger candidates for trademarking due to their ability to uniquely identify the source of goods or services, reducing the likelihood of confusion with other brands and increasing the chances of USPTO approval. Going back to the brand name "Apple" as an example, this name for a technology company is distinctive because it uses a common word from an unrelated industry. This distinctiveness makes it easier for consumers to associate the name with the company’s products, like computers and smartphones, rather than with the fruit. Because of this unique association, "Apple" is a strong candidate for trademarking in this context, as it can identify the source of the goods and reduces the risk of confusion with other brands.
Another example is the brand name "Nike." Nike is distinctive because it is derived from the name of the Greek goddess of victory, which has no direct connection to athletic footwear or apparel. This distinctive pairing helps consumers easily associate the name with the company’s products, like shoes and sportswear, rather than with anything else. Because "Nike" is unique and not descriptive of the products it sells, it’s a strong candidate for trademarking, identifying the source of goods and minimizing the likelihood of confusion with other brands.
As you consider which brand elements to move forward with, it’s also critical to ensure that these assets are not already in use or trademarked by another brand in the same or related classes. This step is vital because utilizing brand elements that are too similar to existing trademarks can lead to legal challenges, including potential infringement lawsuits. These conflicts not only derail your registration efforts but can also necessitate a costly rebranding if you're found to be infringing on someone else's trademark rights when you attempt to register those brand elements as your own. To safeguard your investments, a crucial step is conducting a thorough clearance search. This search looks at the availability of your chosen brand elements and can help you avoid the pitfalls of trademark infringement.
Performing a Proper Clearance Search
An essential part of the trademark registration process is a clearance search. A clearance search is conducted to ensure that the proposed trademark is not already in use by another entity and does not conflict with existing trademarks, thereby reducing the risk of legal disputes and rejection by the USPTO.
Clearance searches are crucial to the trademark process. A comprehensive clearance search will examine federal, and state databases, as well as unregistered common law trademarks, to uncover any potential conflicts. State or common law searches focus on identifying trademarks that may not be registered but are still in use and could pose a conflict. A search plays a vital role in assessing whether your trademark is available for registration with the USPTO, and legally protectable throughout the United States.
A thorough clearance search conducted by an experienced lawyer can help you avoid potential legal issues by identifying existing trademarks that may conflict with your proposed mark. This process reduces the risk of your application being denied by the USPTO, saving you time, money, and the potential need for rebranding. Additionally, a lawyer can provide professional analysis and guidance on the search results, advising you on the risk level of proceeding with the trademark or make necessary adjustments to your overall strategy.
Trademark Strategically With Professional Legal Counsel
The trademark registration process can seem daunting, but with the right knowledge, preparation, and professional legal support, it doesn’t have to be. Having a clear understanding of the steps involved and what makes a strong trademark can save you time and stress, and you don’t have to go it alone! An experienced trademark lawyer can help you navigate each stage of the process, from conducting thorough clearance searches to filing your application and beyond.
We’re here to guide you every step of the way, ensuring your trademark registration journey is smooth and successful. Let us help you protect what matters most—your brand. Book your free consultation today!