Obtaining a Trademark for Product Success
By Matthew Yubas

Trademarks play a valuable role in marketing your products. Think of trademarks as the legal aspect of branding. A trademarked product helps build trust, reputation, and loyalty. Whenever you see a trademarked product from Sony, Hershey Foods, or General Electric, you intuitively know what you’re getting before ever opening the package.

     A trademarked brand name allows a company to distinguish itself and prevent others from using a similar name that may tarnish its good reputation. As a result, trademarks are valuable company assets. If trademarks did not exist, inferior products could be advertised by a company called General Electrical and consumers would likely be confused about which products are the real ones from General Electric.

     A trademark must be distinctive and not a common word or phrase. A trademark may consist of a word, letter, number, symbol (logo), color, shape, or combination of these. In some instances, distinctive sounds and smells can be trademarked. A trademark will help you:

• Add value to your product brand and business
• Keep competitors from copying your brand name
• Protect your product’s reputation

Sounds Like

     If your product is trademarked, you can prevent others from using the same or similar names. In particular, there should be no confusion between a trademarked name and another product. For example, the product "Krazy Glue" is trademarked. If you advertised your product as "Krazi Glue" or "Crazy Goo" you’d probably get a "cease and desist" letter from the trademark’s owner, because your product name will confuse consumers. For an easy test, say the words out loud. If the name you’ve chosen sounds like a trademark, you’re most likely facing an infringement. Ultimately, the decision of infringement and damages lies in the courtroom.

     Another test in determining if your trademark application is acceptable is that it should not dilute an existing trademarked brand’s reputation. For example, Sony has a trademark on its Walkman portable electronics products. If a new pet product was called the Dog-Walkman, not only would there be a cause for concern about confusion, but Sony might not want to be associated with a pet product.

Use It or Lose It

     Before filing, the trademark must be "in use." In use means that you must display the product name with the trademark symbol on a flyer, website, or product label in the public domain. Adding a "TM" symbol to your product name (e.g., Productname™) puts the world on notice that you claim rights to that name. Use the trademark in your advertising, brochures, flyers, labels, t-shirts, or on your website.

     To obtain a federal registered trademark, you’ll need to file with the U.S. Patent and Trademark Office. The registration process is now performed online with the Trademark Electronic Application System (TEAS). Once a federal trademark is granted, you may use the symbol "R" inside a circle (e.g., Productname®).

     The trademark lasts for ten years. But may be renewed for additional ten-year periods as long as the trademark is in use. A registered trademark makes it easier to sue for damages in the event of infringement. In addition, a registered trademark will give you the right to obtain a website domain address with the same name. Internet law is still in flux and this may change.

     Keep in mind that in the United States, trademark ownership is usually granted to the first to use the mark, rather than first to file. I suggest that once you come up with a product name, add the "TM" symbol and display it on a website or printed materials. Once you’re able to determine that your product is marketable, officially file for a trademark.

Conclusion

     Trademarks provide a competitive advantage that pays you dividends. In addition to your positioning and branding, customers will trust your trademarked product and feel comfortable doing business with you. And another point to consider when filing; if you are doing business only within your state, you can save money by filing a trademark with your Secretary of State.

Next step: Please see the Invention Success Kit - Self-Marketing Edition.