Trademarks Topics:

7 Common Questions or Topics:

  1. Why do companies spend so much time and money on  marketing and branding?  What do they know that most entrepreneurs and small business owners don’t know?
  2. What is a trademark and what is the relationship between trademarks, marketing and branding?
  3. What is branding?
  4. What strategy should I use to select a trademark? 
  5. What is the process to file a trademark application, and what steps do I need to follow to keep my trademark?
  6. Can domain names be trademarked?
  7. Can I use another company’s trademark in my ads and brochures?

1.  What is a trademark and why are they important?

Trademarks are works, slogans, logos, sounds, and smells adopted by companies and associated with their products and services that help consumers identify their products and services from the products and services offered by other companies. Unlike patents, trademarks are automatically assumed once a business uses a certain mark to identify its company, and may use the symbol TM without filing their symbol or name with the government. Unfortunately, the trademark is only protected in the specific market area where the goods or services are sold. To protect the trademark outside the specific market area, the company must obtain a federal trademark.

Like the patent process, the federal trademark process requests the submission one or two types of federal trademark application. Fees, drawings, and specimens must also be submitted. This process, like a patent process is primarily a “first to file system.” The trademark application undergoes examination with a trademark examining attorney. Critical time periods are established for filing certain papers and submitting fees. The process is complex, time consuming, and unforgiving if errors are made.

2.  What can and cannot be trademarked?

 Descriptive or generic words or phrases cannot be used as trademarks. 

3.  When should you file your trademark application?

You should file your tradmark application as soon as possible.  Most jurisdiction are ‘first to file’ jurisdictions. 

4.  In what jurisdiction should you file your trademark?

 If you plan you use your trademark only in state (intrastate) then only file a state trademark application after you have begun using the mark.  If you plan you use the mark between the state (interstate), then you should file a federal  Intent to Use trademark application as soon as possible.

5.  How do you protect your trademark?

Begin using the mark as a trademark and file either a state or federal trademark application as soon as possible.

6.  Choosing a trademark?  Branding vs Trademarks vs Advertising: 

Before choosing a trademark, it is important the user understand where trademarks fit into the larger commercialization’ picture.

Commercialization involves the acts of developing, manufacturing, distributing and selling of goods and services in the U.S. to make money.  Branding, trademarks and advertising pertain to the acts of distribution and selling goods and services.   Unfortunately, entrepreneurs and small business owners don’t know the difference between ‘branding’, ‘trademarks’ and ‘advertising’.  Do you?

Branding is the concept of indelibly impressing a company’s reputation or goodwill to a user to create loyalty in the user so they continue to buy the goods and services in the future.  Branding typically involves evoking emotions in the user that become associated with company. Every time the company is identified by the user, a positive emotion is evoked in the user (recall classic condition experiments known as Pavlov’s dog experiment). Because the condition response is acquired by repeated exposures to the stimuli, companies develop one or two consist branding elements (trademarks is a branding element) and repeatedly use the branding elements in a manner so users come in contact with it (called Redundancy).

Two types of ‘branding’ activities – ‘affinity branding’ (When you see a trademark symbol used with a goods and service you associate the trademark to the good or service); and ‘dispositional branding’.  An example of dispositional branding is when you ask someone what is their favorite car rental company, what car rental company to they recall?  Usually, they recall a specific situation or environment in which they had a positive car rental experience or recall the name of the company associated with the positive experience.

Companies use two methods to ‘brand’ – indirect (ads, signs, etc, less effective) and experience branding (what was the user’s experience when they used your goods or service, most effective).

Trademarks are branding elements, such as words, symbols, phrases, colors, etc) that companies adopt that are easy to remember or recall or that generator a novel aspect or key benefit the company want to associate with the goods or products.  

Every brand element has visual, verbal, and auditory aspects. . When these aspects work together, marketing messages are well-received and consumers are motivated to action. When those elements don’t work together, marketing messages fall flat and advertising expenditures fail to deliver an adequate return on investment.

Visual branding refers to the images (including video images) that represent the brand. These images could be part of the brand identity, such as the logo, or they can be part of advertisements, the brand website, and so on. Any visual cue associated with the brand is a form of visual branding.

The verbal aspect of a brand element refers to the words and messages you want associated with the product or service. The words themselves are often part of the trademark.

Auditory aspects of a brand element refers to the sounds associated with a product or service. Those sounds can be sounds that automatically come to mind when the product or service is encountered or they could be played in television or radio commercials, speeches, live events, recorded interviews, and so on.

When choosing a trademark, it is important that remember that trademarks are part of branding. First, determine what is your brand or branding message. Second, choose a trademark that best communicates and conveys this branding message (visually audibly, and vocally) to your customers and is easy to recall.  Next, conduct a federal and  common law trademark search to see if the proposed mark is available. Next, file a federal trademark application as soon as possible. Use the mark in interstate commerce correctly.  

7. Trademark Searching:

  • Trademark Searching Template: 
  • Federal Trademark Search:  USPTO Trademark Electronic Search System (TESS)
  • Common Law Searches: Google.com and Amazon

8.  Miscellaneous Info: 

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