“Trademark” is not a verb. It is a noun. In the United States, trademark rights accrue through use, not through registration. This means that when a mark is affixed to goods that are sold in interstate commerce, or used in interstate commerce to advertise services, a trademark right arises. This is called a “common-law” trademark. Trademarks may also be registered with the United States Patent and Trademark Office (USPTO) and with foreign governments.
By definition, a trademark must perform a source-identification function. For example, when I say, “Big Mac,” you think of McDonald’s as the source of that hamburger. When I say, “swoosh” in the context of shoes, you think of Nike as the source of the shoes. When I ask you to think of the sound of a lion roaring in the context of motion picture film production, of whom do you think? MGM. And so on, and thus voila, MGM has trademark rights in the sound of a roaring lion for film production services, Nike has trademark rights in the swoosh on its sneakers and McDonald’s has trademark rights in “Big Mac.” Each of these companies has gone on to register these marks with the USPTO and various foreign governments.
Selecting a new trademark is an important step in building brand recognition and preparing for a new product or service launch. It is incorrect to conclude that a mark is available, and thus the best mark for your launch, if all you do is surf your web browser over to USPTO.gov and run a quick screening search. That is not enough, at least not now in the Internet age.
The Internet has changed many of the traditional paradigms about what makes a good trademark. This is why I recommend selecting a trademark (or service mark; they are the same for these purposes) that meets four criteria:
1. It is capable of functioning as a trademark. Generic or descriptive words or phrases are very difficult to claim trademark rights in. If you make and sell potato peelers and you choose “Potato Peeler Pro” as your trademark, that will be hard to enforce against infringers. You could put “TM” on it, like this: Potato Peeler Pro™, but that would not change its core characteristic as a weak, descriptive mark.
2. You can use it without getting sued–and losing. Remember that trademark rights arise through use, not registration. If someone out there has been using a similar mark in connection with related goods or services since before your launch date, even it is not a registered trademark, they might sue you. And it’s not even so much getting sued—everybody gets sued. You need to know your odds of winning that lawsuit. Some companies pick a mark even if they think they will get sued if there’s a good chance they will win that lawsuit.
3. You can register it with USPTO. Registration does not create a trademark right in the U.S., but registration is important if (a) you also wish to seek international registration; (b) you ever intend to sell your company or seek investor money since registration is seen in those contexts as adding value; or (c) you will ever need to enforce your trademark online. It is very difficult to seek redress for online trademark infringement or domain name cybersquatting without a registered trademark.
4. You can obtain all the domain names and social media identifiers that will support the launch. If you cannot get, e.g., “facebook.com/[yourtrademark],” you might want to reconsider your trademark choice.
Applying these four tests to your new trademarks before you launch will help you pick a clean mark that will be enforceable, be defensible and create value in your company.
Brad Frazer is a partner at Hawley Troxell where he practices Internet law, publishing law and copyright law. He is a published novelist and a frequent author of Internet content. He may be reached at firstname.lastname@example.org.