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The Four Requirements for a Trademark: AN EASY GUIDE

Four Requirements for a Trademark

By Michael Kondoudis, Small Business Trademark Lawyer

This is our EASY guide to the trademark requirements.

Trademarks are the foundation of every successful brand. Knowing how to protect them with federal trademark registrations is essential.  

If you need to know the requirements for trademark protection, then this guide is for you.

Let’s get started!

CONTENTS

I. TRADEMARK REQUIREMENTS DEFINED

Trademark requirements are the criteria that must meet to be eligible for trademark protection. These trademark requirements dictate whether a trademark is eligible for trademark protection. The U.S. Patent and Trademark Office (USPTO) uses trademark requirements to determine whether to approve or reject a trademark application. When you satisfy the trademark requirements, the USPTO will grant you a federally registered trademark. Trademark requirements come from Federal Trademark Statute.

II. THE FOUR REQUIREMENTS FOR ALL TRADEMARKS

There are four main trademark requirements.

First, your mark cannot conflict with any other trademark because of confusing similarity. Second, your mark must be distinctive.  Third, you must use your mark in commerce.  Fourth, your mark must be a source identifier for your products or services. So, getting your Federal trademark comes down to meeting the same four trademark requirements:

Here is what all this means for you and your brand.

Trademark Requirement  #1 – No Conflicts 

The first of the four trademark requirements is to show that a trademark does not  conflict with existing registrations or pending applications. Your trademark cannot conflict with any other Federal trademarks. The U.S. Patent and Trademark Office (or “USPTO” for short) says that this is the most common reason to refuse registration. This is the most important of the requirements for a trademark.    

After your application is filed, the USPTO searches the Federal trademark database to look for conflicts between your mark and any other Federal trademarks. When there is a conflict, the USPTO will reject your application.

This search extends to other Federal trademarks that are close enough that confusion is “likely.” The USPTO bases this decision on (1) similarity between the marks in appearance, sound, or meaning, (2) similarity between the goods/services, and (3) how those goods/services are purchased.

Arguments that you disagree, without much more, will not change an Examiner’s mind.

You’ll need to apply the same multi-faceted 12-factor analysis the Examiner is using. This is where a trademark lawyer comes in. A trademark lawyer is far more likely than you to do this effectively.

Trademark Requirement 2 – Trademark Distinctiveness

The second of the four trademark requirements is to show that the trademark is “distinctive.”  In a trademark sense, distinctiveness is a measure of how well a mark identifies the source of a product. The more distinctive your mark, the stronger it will be, and the easier it will be to register. That makes distinctiveness an important one of the requirements for a trademark.

To be considered distinctive, a trademark must be either inherently distinctive or have acquired distinctiveness through use. Inherently distinctive trademarks are those that are not descriptive and are not similar to other marks in the same field. Acquired distinctiveness is when a mark has become distinctive through prolonged and exclusive use in commerce.

How The U.S. Patent and Trademark Office Measures Distinctiveness

The USPTO measures trademark distinctiveness on a spectrum and in view of the goods and/or services you list in an application.

The Strongest Trademarks are “Fanciful”

The strongest and most distinctive marks are “fanciful.” Fanciful marks are invented words with no dictionary like KODAK, PEPSI, and EXXON.

Fanciful = distinctive

“Arbitrary” Trademarks are Strong

The next strongest and very distinctive marks are “arbitrary.” Arbitrary marks are words with dictionary meanings that have no association/relationship with the goods/services of an application.  APPLE for computers is an example of an arbitrary mark.

Arbitrary = Distinctive

Suggestive Trademarks are “Protectable”

Next on the distinctiveness continuum are “suggestive” marks. Suggestive marks require a mental step – imagination, thought, or perception – to reach a conclusion as to the nature of those goods or services of an application. CITIBANK for financial services, GREYHOUND for bus lines, and JAGUAR for automobiles are examples of suggestive marks.

Suggestive = Distinctive

“Descriptive” Trademarks are Weak

The least distinctive marks are “descriptive” trademarks. Descriptive marks immediately convey an ingredient, quality, or characteristic of the goods or services of the application. No mental step is required. For example, the mark CREAMY would be merely descriptive for yogurt.

To register a descriptive trademark, you need to show that it as acquired some “secondary meaning” with buyers through extensive use over several years.

Descriptive + Secondary Meaning = Acquired Distinctiveness

In the end, there are four categories of trademarks: generic, descriptive, suggestive, and arbitrary or fanciful. Generic marks are those that describe the goods or services they are used on and cannot be registered. Descriptive marks are those that describe a feature or quality of the goods or services they are used on. Suggestive marks are those that suggest a quality or feature of the goods or services they are used on. Arbitrary or fanciful marks are those that have no relationship to the goods or services they are used on.

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Trademark Requirement #3 – Use in Commerce

The third of the four trademark requirements is use. Trademark rights are based on commercial use. So, it should be no surprise that another of the trademark requirements is to show that a trademark is actually used in commerce. This requirement for a trademark can often be difficult to show.

The USPTO will let you apply before you begin use, but you will still need to show that you are using your mark to complete the process.

The use must be of a type that the U.S. Congress can regulate. This means use with a good or service that crosses State, national, or territorial lines, or that affects commerce crossing such lines (e.g., an Internet business) or that caters to interstate or international customers.

Trademark Requirement #4 – An Identifier of Source 

The fourth trademark requirement is that a mark is capability of identifying the source of a product or service.  Not every word, name, symbol, or device adopted as a trademark is registrable. Some marks are simply not capable of distinguishing and identifying the source of a product. Others are precluded by Federal law. The following are a few examples:

Ornamentation: The USPTO will refuse registration of the applied-for mark when it is a feature or part of the “dress” of the goods. Such matter does not serve the trademark function of identifying the source of a product.

Deceptive: Marks containing a term that misdescribes the character, quality, function, composition, or use of a product will be refused registration. It is not impermissible for a mark to be technically misdescriptive so long as prospective consumers would not be likely to believe that the misdescription is true. For example, the mark BLACK FLEECE for clothing items would be deceptive while the same mark for cheese would not.

Protected by statute: Federal law reserves the use of certain particular national and international organizations such as Boy Scouts of America and Peace Corps. Also reserved are names, symbols, seals, and medals adopted by the United States Federal government, including agencies. For example, SECRET SERVICE, COAST GUARD, and SMOKEY BEAR are all reserved by the Federal government.

Generic terms: Any term that identifies a type of product instead of the source is not registrable. Aspirin, Jetski, Bubblewrap, and Jacuzzi are examples of generic terms. A generic term can never distinguish a brand because consumers use it to refer to a category of goods/services.

Remember, to register a trademark, a trademark distinguishes a product from the competition.  Only devices (names, logos, colors, catchphrases) that consumers recognize as a brand are protectable trademarks.  This is the last of the four requirements for a trademark.

III. TRADEMARK PROTECTION REQUIREMENTS

A trademark is only eligible for trademark protection when specific trademark requirements are met. There are two trademark requirements, and you must meet them to qualify for trademark protection. There are two basic requirements for trademark protection:

(1) the mark must be distinctive

(2) the mark must be in use 

Trademark Protection Requirement #1 – Distinctiveness

The first requirement, distinctiveness, means that the mark must be distinctive enough that consumers associate it with a particular source of goods or services. This requirement focuses on a trademark’s ability to communicate that specific goods emanate from one producer or source, not another. There are four categories of distinctiveness:

  • Arbitrary
  • Fanciful
  • Suggestive
  • Descriptive

 

Trademark Protection Requirement #2 – Use

The second requirement, use in commerce, means that the mark must be used in connection with goods or services. This requirement arises because trademark law is constitutionally grounded in the congressional power to regulate interstate commerce.

IV. REQUIREMENTS FOR TRADEMARK APPLICATIONS

There are six basic requirements for filing a trademark (or service mark) with the U.S. Patent and Trademark Office (USPTO):

 

1. The application must be filed in the name of the actual owner of the trademark.

A trademark owner is the individual or entity that applies the mark to goods they produce or uses the mark in the advertising or rendering of services they perform. The owner can be an individual or an LLC, corporation, or partnership. The application must specify whether the applicant is a person or a business formation (e.g., LLC, corporation, partnership, or trust).

 

2. The application must specify the applicant’s citizenship (if the application is a person) or the applicant’s state for formation (if the applicant is an LLC, corporation, or partnership).

The USPTO does not require that individuals have U.S. citizenship, but it requires that every applicant must state their citizenship.

 

3. The applicant must state whether the application on (a) actual use of the trademark in commerce, (b) an intent to use the trademark in commerce in the future, or (c) a foreign trademark.

The USPTO will require a good faith statement of your intent to use the trademark in the future, and the intent must be real.

 

4. The applicant must list the products and services being sold under the trademark (for applications based on actual use) or will be sold under the trademark (for applications based on intent to use).

For applications based on the actual use of the trademark, the applicant must list the products actually being sold under the trademark or the services that are actually being rendered under the trademark.

For applications based on an intent to use the trademark in the future, the applicant must list the products that will be sold under the trademark or the services that will be rendered under the trademark. 

 

5. The applicant must provide a drawing of the trademark.

A drawing is a depiction of the trademark. For applications based on actual use, the drawing must show the trademark as it is actually used. For applications based on an intent to use a trademark in the future, the drawing must show the mark as the applicant intends to use it.

The USPTO will generate the required drawing if the trademark consists of plain letters and/or words. The applicant must submit the drawing if the trademark is a logo or consists of stylized letters, colors, or design elements.

 

6. Payment of the appropriate filing fee for the application.

You must submit the appropriate filing fee for your application. The USPTO charges a filing fee for every trademark application. The USPTO charges a fee for each class of products and/or services listed in the application. So, the total required filing fee for any trademark application depends on the number of classes of products and/or services listed in it.

V. REQUIREMENTS FOR TRADEMARK REGISTRATION

If you want to register your name, logo, design, or slogan with the U.S. Patent and Trademark Office (USPTO), you must file a trademark application that meets specific trademark requirements. There are six basic requirements. The six basic requirements for trademark registration are:

  1. Identify the trademark owner
  2. Specify whether the trademark owner is a business or person
  3. State whether the trademark is in use or there is a real intent to use
  4. Provide a drawing of the trademark
  5. List the products and/or services sold under the trademark
  6. The trademark must be distinctive

®  Legally Own Your Trademark!  

Trademark Registration Requirement #1 – Owner Name

Trademark applications must state the name of the owner. The trademark owner is the entity responsible for the quality of the goods or services sold with that trademark. The owner can be an individual, a partnership, a corporation, an LLC, or an association.

Warning: The owner of the application must be correctly identified by name. Any failure to accurately identify the correct entity that owns the trademark will jeopardize an application. So, it is critical that the owner is correctly identified within the application.

Trademark Registration Requirement #2 – Owner Type

Trademark applications must indicate whether the owner is a person, an LLC, a corporation, or an association. If the owner is a person, an indication of citizenship is required. If the owner is a business formation (e.g., LLC, corporation), the state of formation is required.

Trademark Registration Requirement #3 – Trademark Use

Trademark applications must indicate whether the trademark is in use, or the applicant has a real intent to use the mark. 

For applications based on use, the application should list the products and/or services branded by the trademark.

For applications based on a real intent to use, the application should list the products and services that will be branded by the trademark in the future.

Trademark Registration Requirement #4 – Drawing

Trademark applications require a drawing that depicts the trademark you seek to register. The USPTO will generate a drawing for you if your application is just a word, name, phrase, or slogan. If your trademark is a character, symbol, design, or logo, you must submit a drawing of the trademark.

Trademark Registration Requirement #5 – List of Products/Services

Trademark applications must include a list of the products and/or services sold or to be sold under the trademark.

Trademark Registration Requirement #6 – Distinctiveness

The U.S. Patent and Trademark Office only registers distinctive trademarks. This means that consumers associate them with a particular source of certain goods or services. This requirement focuses on a trademark’s ability to reduce confusion in the marketplace.

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Trademark Your Brand: 7 Practical Reasons

trademark your brand

Your brand matters. After all, your brand is WHO you are, WHAT you do, and WHY you do it. Remember – people are loyal to brands, not products.

Trademarks protect brands. They are the foundation of every successful brand. That’s why it is important to trademark your brand.

The single best way to protect your brand is with a Federal trademark.

Here are seven practical reasons why you need to get a Federal trademark for your brand.

  1. You’ll Enjoy Enhanced Protection on Social Media
  2. You’ll Enjoy Enhanced Protection on the Web
  3. You’ll Have Access to Brand Registries Like Amazon’s Brand Registry
  4. You’ll be Able to Invest in Your Brand with Confidence
  5. You’ll Stand Out in a Crowd With the ®
  6. You’ll Enjoy Better Social Media Results
  7. You’ll Enjoy Some Instant Credibility

          Bonus Reason: You’ll Make Your Marketing Easier and Less Expensive

 

Reason #1 to Trademark Your Brand — You’ll Enjoy Enhanced Protection on Social Media

Social media services like Facebook, Instagram, and Twitter have policies in place to protect brands against abuse – provided that you can establish ownership. A Federal trademark makes establishing ownership a mere formality.

 

Reason #2 to Trademark Your Brand — You’ll Enjoy Enhanced Protection on the Web

A trademark is an exclusive right to use your name or logo. This means you’re the only one who can use it in your industry. When you secure a domain that includes your trademark, all of the legal protections and presumptions that accompany Federal trademarks apply to your web address.

 

Reason #3 to Trademark Your Brand — You’ll Have Access to Brand Registries Like Amazon’s Brand Registry

The Amazon Brand Registry is an important and powerful brand protection tool. When you enroll, Amazon will look for and stop trademark violations. Amazon’s Brand Registry is limited to Federal trademarks, however.

 

 

 

Reason #4 to Trademark Your Brand — You’ll Can Invest in Your Brand with Confidence

Trademarking your brand gives you the exclusive and nationwide right to use it for your brand.  This means you won’t risk having to rebrand. So, you can confidently invest in your website, business cards, and marketing.

 

Reason #5 to Trademark Your Brand — You’ll Stand Out in a Crowd With the ®

Only owners of Federally registered trademarks are legally permitted to use the ® sign. This symbol is an attention grabber, in both the offline and online worlds.

 

Reason #6 to Trademark Your Brand — You’ll Enjoy Better Social Media Results

Customers are searching, tagging, and commenting on brands using Facebook, Twitter, and Instagram more than ever. A memorable trademark translates into greater visibility, which translates into higher rankings that bring more traffic, more customers, and more brand recognition.

 

Reason #7 to Trademark Your Brand — You’ll Enjoy Some Instant Credibility

Only Federal trademark registration gives you the legal right to use the ® symbol, which tells the world that you take your business and brand seriously. Plus, the ® has been shown to validate the confidence your customers want to have in you. Every company (young or old) can do with some instant credibility, right?

 

Bonus Reason: You’ll Make Your Marketing Easier and Less Expensive

Science confirms that humans are hardwired to process information visually. Studies have shown that humans have evolved to receive 90% of all information visually. That’s “a picture is worth a 1000 words” and why trademarks matter. They are the single best way to incorporate visual marketing in both the online and offline worlds.

 

Why wouldn’t you protect your good name and hard work?

Building a business that proudly offers quality products takes enormous amounts of hard work, dedication, and courage. The effective branding of those products also takes valuable time and creativity. Doesn’t it just seem right to protect that effort and investment? After all, think of the sales you might lose if another company opened up using your same name.

 

Plus, rebranding will be expensive

At some point, you might face a challenge from a competitor over your brand. If you don’t take the necessary steps to clear and register your trademarks, you could find yourself in a battle that you don’t want to fight. Rebranding is a nightmare that can be avoided by thinking ahead and acting earlier rather than later.

 

In the end, it comes down to this:

If you’re serious about your business and your brand, then you need to protect them. A Federal trademark registration is the single best way to do that.

 

Seven Legal Reasons to Trademark Your Brand

Trademark Your Brand

Your brand matters. After all, your brand is WHO you are, WHAT you do, and WHY you do it. Remember – people are loyal to brands, not products.

Trademarks protect brands. They are the foundation of every successful brand. That’s why it is important to trademark your brand.

The single best way to protect your brand is with a Federal trademark.

Here are seven legal reasons why you need to get a Federal trademark for your brand.

  1. They Put the Federal Government to Work for You Protecting Your Brand
  2. They Come with Nationwide Protection
  3. They Deter Copycats
  4. They Make Protecting Your Brand Easier
  5. They Lead to More (and Repeat) Sales
  6. They Make Foreign Registrations Possible
  7. They Can Continue Indefinitely
  8. They Make Protecting Your Brand Easier

          Bonus Reason: They are Property With Real Monetary Value

 

Reason #1 to Trademark Your Brand — They Put the Federal Government to Work for You 

The U.S. Patent and Trademark Office will immediately begin rejecting

applications for trademarks that are similar to yours. In fact, the USPTO is legally required to refuse them. You can even ask the Department of Homeland Security to look for infringements at the border!

 

Reason #2 to Trademark Your Brand — Nationwide Protection

A Federal trademark comes with the legal presumptions of your ownership of your trademark in all 50 States, along with an exclusive right to use it and access to Federal courts to protect it.

 

Reason #3 to Trademark Your Brand — They Deter Copycats

Registration adds your mark to the Federal trademark database, where it will be found by competitors searching for new names. They will have strong incentives to steer far clear of your Federal rights, or risk having to rebrand.

 

 

 

Reason #4 to Trademark Your Brand — They Make Protecting It Easier

Your Federal registration will allow you to bring an action in Federal court for money damages. The threat of this potential legal option alone often causes infringers to stop.  In this way, a Federal registration makes it much easier, quicker, and cheaper for you to prevent competitors from using conflicting trademarks.

 

Reason #5 to Trademark Your Brand — They Lead to More (and Repeat) Sales

Trademarks help customers find the products and services that they like. This helps make them repeat customers, especially for e-commerce businesses. Also, trademarks help customers recommend products and services to their friends. This is free marketing.

 

Reason #6 to Trademark Your Brand — They Make Foreign Registrations Possible

A Federal trademark can be used to secure trademark protection in foreign countries like Canada, China, Mexico, and the United Kingdom.

 

Reason #7 to Trademark Your Brand — They Can Continue Indefinitely

Your Federal trademark registration may not expire as long as it is used in “interstate commerce” and certain filings are periodically made. In fact, some of the most recognized brands in the United States today have been registered for over a hundred years. Mercedes, for example, was first registered in 1900. Pepsi-Cola was registered in 1896.

 

Bonus Reason: They are Property Worth $

Federal trademarks are property.  They are the way you monetize a brand. The more your business reputation grows, the more valuable your brand can become. Federal trademarks can be bought, sold, licensed (like renting or leasing) or used as a security interest to secure a loan to grow your business.

 

Why wouldn’t you protect your good name and hard work?

Building a business that proudly offers quality products takes enormous amounts of hard work, dedication, and courage. The effective branding of those products also takes valuable time and creativity. Doesn’t it just seem right to protect that effort and investment? After all, think of the sales you might lose if another company opened up using your same name.

 

Plus, rebranding will be expensive

At some point, you might face a challenge from a competitor over your brand. If you don’t take the necessary steps to clear and register your trademarks, you could find yourself in a battle that you don’t want to fight. Rebranding is a nightmare that can be avoided by thinking ahead and acting earlier rather than later.

 

In the end, it comes down to this:

If you’re serious about your business and your brand, then you need to protect them. A Federal trademark registration is the single best way to do that.

 

Register your trademark - click here.