Barbara Sadler: How To Trademark A Word

Any design, logo, symbol, name, or word that distinguishes a product or service from those offered by its competitors is a trademark. If you own a trademark, you can prevent others from using it. The benefit of having a trademark is that it represents your brand and over time may come to stand for quality.

You own a trademark if you are the first to use it in commerce, even if the word or mark in question is not registered.

What Are the Benefits of Registering a Trademark?

Many trademark owners wonder whether they should go through the trouble of federal registration. These are some of the main advantages of doing so:
• If you are seeking legal remedy for infringement and the trademark is registered, the defendant must bear the burden of proof.
• Other companies using similar trademarks in other states cannot claim territorial rights. State trademarks provide protection only in your state, a concern in the increasingly global marketplace.
• Federal trademark registration can be used to apply for trademark protection in other countries.
• If infringement occurs, you can litigate in federal court.
• Others will be deterred from using the mark.
• You may use the federal registration symbol.
• Your trademark will be listed in the USPTO’s online database.

How Do You Trademark a Word?

When you trademark a word, you give a person or company exclusive rights to connect one brand with that word. You can trademark a word that identifies your company or your products.

Register your trademark with the U.S. Patent and Trademark Office (USPTO) to protect your trademark throughout the United States. A trademark registered with the USPTO is a registered trademark and gets marked with the registered trademark (®) symbol.

You don’t have to register a word with the USPTO to get trademark status. A word is a trademark if that word identifies a brand, regardless of whether the word itself is registered. However, unregistered trademarks with the USPTO are only trademarked within the company’s geographical area. Trademark rights for an unregistered mark belong to the company that first used the mark. Use the trademark symbol (TM) for a trademark that isn’t registered with the USPTO.

How to Trademark a Phrase or Word

• Trademarks offer legal protection for the identifying features of commercial products. The feature can be the name of the product – its brand name – or a short phrase associated with it, like Maxwell House’s “Good to the last drop,” a trademark currently owned by Kraft Foods. Trademarks can be other features as well, such as a distinctive sound, shape or color combination associated with your product. Obtaining a trademark is straightforward.

You don’t necessarily have to do anything special to trademark a word or phrase. The simple act of using the word or phrase in association with your commercial product is enough to confer trademark protection. No registration is required and there is no paperwork necessary to bring your trademark into being.

Although your trademark comes into existence even without registration, the legal protection it offers is not quite at full strength. If another product infringes on your trademark (that is, uses the same name or phrase without your permission), or if you are accused of infringing on someone else’s trademark, then the lack of registration can be detrimental.
A registered trademark has a clear paper trail, an official record of trademark ownership and the length of time it’s been in use. The record is valuable evidence in case you have to argue trademark priority in a court case over ownership.

Registering Your Trademark

You register trademarks with the U.S. Patents and Trademarks Office. The process for registering with the USPTO involves a fee and a good deal of paperwork. It often pays to hire a trademark specialist to assist with the registration.
The Trademark Registration Process
The USPTO website provides comprehensive guidance for registering your trademark. In essence, though, the steps are:
Check the trademark database
Search the trademark database and other sources of product information to make sure your trademark won’t conflict with one that is already in use. Products can carry similar (even identical) names as long as there is no likelihood of confusion. Acme Exterminators and Acme Catering can both use the Acme name, as the similarities of the names are not likely to cause confusion.

Complete the paperwork
Fill out the trademark application, either on your own or with the assistance of a specialist. The application can be prepared and submitted online, or submitted to the USPTO on paper; the latter method generally takes longer for the Trademark Office to process.
Pay the fee
Pay the fee, typically in the $200 to $300 range, though it varies according to the type of application.
Why Is Knowing How to Trademark a Word Important?
When you trademark a word, your competitors can’t use that word to identify their products. A trademark:
• Sets companies apart from one another
• Protects brand integrity
• Prevents unfair competition from customer confusion or deception
Registering a trademark with the USPTO lets you take legal action against companies who unjustly use the mark. You can sue for damages, attorney fees, and court costs if someone illegally uses your trademark. This illegal use is a trademark infringement.
When you trademark a word, you don’t protect it from use in everyday speech use or informational material. A trademark also doesn’t stop industries that don’t compete with your business from using the word.
When Should You Trademark a Word?
Trademark a word if it identifies your brand. You want to protect your brand and set your products apart from competitors’ products.
USPTO registration isn’t required for trademark status. However, a trademark gives you these benefits:
• Nationwide ownership
• Public notice of ownership
• Legal protection against infringement
• Use of the registered trademark symbol
• Listing in USPTO databases
• Ability to apply for trademark status in other countries
How Do You Create a Strong Trademark for a Word?
You need to have a strong word for your trademark. Made-up words and words that aren’t directly related to your product are the strongest words to trademark. Consider some word types when creating your trademark:
• Invented words: You can’t use these words in any context other than with your brand. For example, Adidas has no meaning other than the name of the company.
• Arbitrary words: Arbitrary words are words that exist but aren’t related to your product. An example of an arbitrary word trademark is bumblebee for Bumble Bee Seafood.
• Suggestive words: Suggestive words speak to a trait of your product but don’t directly refer to it. For example, the word Patagonia has no direct connection to outdoor clothing, but the word suggests imagery of outdoor adventures. Suggestive words are good trademarks, but they are less strong than invented or arbitrary words.

• Descriptive words: Descriptive words describe how you use a product. Descriptive words are difficult to trademark. An example of a descriptive word is Red Delicious for a type of apple.
• Generic words: Generic words that name a product can’t be trademarked. So while Apple Inc. can trademark Apple when talking about its products, a company that sells apples can’t trademark the name Apple.
How Do You Protect a Trademark for a Word?
When you trademark a word, you gain rights over the word. But you can lose the rights if you don’t protect your trademark.
1. Enforce Proper Usage
You should enforce proper capitalization and use of the registered trademark symbol wherever your trademarked word appears. If you don’t enforce proper use of your trademark, the word could become a generic name for the product. If a word becomes generic, you can lose the word’s trademark.
Dumpster is an example of a word that became generic and lost its trademark. Dempster Brothers created the word dumpster for their trash disposal brand. Over time, the word became a generic term for garbage containers.
Failure to enforce proper use of and attribution for your trademarked word, including trademark symbol usage, can also cause trademark dilution. Trademark dilution occurs when a trademarked word becomes less unique, gets adopted as a household name, or results from both situations. Your trademarked word could also get used in another industry. Dilution is only considered a type of trademark infringement for famous trademarks.

Protect Against Infringement

Infringement happens when a competitor illegally uses your trademarked word. File an infringement lawsuit to stop illegal use of your trademark. A lawsuit can result in an order for the competitor to stop using the trademark, to receive monetary damages, or both.
Stopping infringement protects your brand and prevents customer confusion. You should talk with a trademark lawyer before you file an infringement lawsuit.

Past Examples

Language is ever evolving, shaped by centuries of iteration, elimination, and re-creation. Words fall by the wayside and some, for better-or-worse, storm our vernacular over the course of a matter of months. To a degree, however, many are unaware of how greatly our language is influenced by one of those most ubiquitous institutions in the world: commerce.
Throughout history, words have taken on meaning and left it behind, becoming “genericized” in our everyday language. Many of these were once trademarks; brands championed by entrepreneurs and industry tycoons whose achievements have so permeated our culture that they cease to belong to a single entity.

Kerosene

Of the myriad words in our language that used to carry a royalty fee, several were born at the advent of the Industrial Revolution. With savvy businessmen eager to profit from this innovative age, it is no wonder that many common items became the subject of trademark registrations. In 1854, Abraham Gesner, in conjunction with the North American Gas Light Company and the Downer Company profited from the trademark of the term Kerosene. The term, likely derivative of the Greek term for was, ceros, is now used for any mixture of petroleum chemicals used for heating, fuel, or as an insect repellent.

Escalator

In 1897, Charles See Berger redesigned a Coney Island novelty ride that transported passengers up a moving staircase. Manufactured by Otis Elevator Company, the Escalator became a part of the vernacular before being genericized in 1950 when the patent was lost.

Touch-tone

Silicon Valley’s Intellectual Property disputes over website names, brands, and even color schemes are a distant grand-child to the technology registrations of the mid-to-late century. One such mark is “touch-tone”, a technology invented in 1962 and manufactured by Bell Telephone. The term appeared in the 1960s as a trademark but did not receive widespread use until the 1980s.

Videotape

Another now-archaic technology that permeated prose was the “videotape”. Invented in 1951 by Charles Ginsburg and his research team and manufactured by Apex, the term simply would not escape the home media conversation until the advent of DVDs in the late 1990s.

There are Limits

On the other side, as with trademarking quotes, the USPTO will reject applications for common phrases under certain circumstances. In 2014 the USPTO rejected nine applications for the phrase BOSTON STRONG, which grew from the 2013 Boston Marathon bombing. In rejecting, the USPTO wrote that “consumers are accustomed to seeing this slogan or motto commonly used in everyday speech by many different sources.” They decided similarly in 2002, when many companies filed trademark applications for the term “LET’S ROLL”, which was associated with the passengers on United Airlines Flight 93 on September 11, 2001.

Phrases that become popular during news events are not the only common words and phrases the USPTO might reject. In 2007 the USPTO rejected a trademark application for the word PODCAST. In their final Office Action, they stated: “The mark immediately describes and names the characteristics and features of the goods. Accordingly, the mark is refused registration on the Principal Register under Section 2(e) (1) of Trademark Act.” Since the term podcast has acquired a meaning of its own, no one can trademark it by itself when used in connection with podcast-related products or services. There are a number of active trademarks that use the word PODCAST, but they all contain the standard disclaimer: “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ‘PODCAST’ APART FROM THE MARK AS SHOWN”.

Trademark Attorney Free Consultation

When you need legal help with a copyright, trademark or other intellectual property in Utah, please call Ascent Law LLC for your free consultation (801) 676-5506. We want to help you.