Category: Trademarks

  • What should a business trademark?

    Trademarks - BrandsI have so many things to trademark – where do I start?

    I get this question all the time. First, keep in mind that the strength of a brand is in its ability to distinguish a product or service from similar products being offered by others. Think of any famous brand (Starbucks(R), McDonald’s(R), or other famous trademark). While these companies may have multiple trademarks, they put the most effort into marketing only a few of these brands.

    Most trademark attorneys will recommend a Clearance Search and Opinion – Using someone’s else’s mark can result in a trademark infringement action!

    (more…)

  • Can I file a trademark or copyright for a product name?

    Attorneys are often asked “can I file a trademark or copyright for a product name?”

    Generally, an application for a federal trademark registration can be filed for a word-only, word-and-graphic, and/or graphic (e.g., logo) trademark that is used to identify the source of goods or services in interstate commerce.

    There are some basic requirements, however. For example, the trademark sought to be registered can not be confusingly similar to a mark already being used by someone else. In addition, the mark cannot be generic (e.g., the terms “gas station” used to identify a “gas station”). Merely descriptive marks can be difficult to register, and the Trademark Office Examiner will often require that the mark be registered on what is called the supplemental register (as opposed to the principal register), until the owner of the trademark can be shown that the trademark has acquired secondary meaning.

    Other types of trademarks are easier to register. For example, suggestive (e.g., “hot chocolate” to identify sun tan lotion), arbitrary (real-words used to describe something totally different, e.g., “Apple” to identify a computer), and fanciful (made up words, e.g., “Xerox”) trademarks can be registered on the principal register without any showing of secondary meaning.

    Suggestive, arbitrary, and fanciful trademarks are also considered stronger marks. That is, these trademarks are typically afforded broader protection against infringers, with arbitrary and fanciful marks often being afforded the strongest protection.

    Those seeking trademarks often initially propose descriptive and suggestive marks. While it is possible to file a registration application and argue that the trademark is suggestive (and not merely descriptive), the applicant may have to amend to the supplemental register if the Trademark Examiner disagrees and asserts that the trademark is merely descriptive.

    Finally, it is a good idea to work with a trademark attorney, and conduct a professional trademark search before using a mark, to reduce the possibility of infringing on someone else’s trademark rights.

  • Patent Attorney Videos at Denver University: 1 & 2 of 8

    Mark Trenner of the Trenner Law Firm presents to small business owners at the University of Denver.

    Parts 1 & 2 of an 8 part series: