Trademark

A trademark is a word or symbol that designates the source or sponsorship of a particular good or service.Trademarks are for goods; service marks are for services.

You file your application with the Patent & Trademark Office (PTO), and they judge the strength of your application and suggested trademark. There are 3 types of trademarks: arbitrary/fanciful, suggestive, and generic.

  • Arbitrary or fanciful. Ex.: Kodak, Haagen-Dazs. There's no relation to the good in the name. Very strong.
  • Suggestive. Ex. Microsoft. Suggestive of the good/service.
  • Generic. Regular, very descriptive, or an arbitrary one that hasn't been protected.

Look for a mark that will pass through the process. The PTO prefers non-descriptive names that are not already out there. So try for an arbitrary/fanciful one, or a suggestive one (a little harder). The PTO checks your trademark against others in that classification of goods.

  • 1st priority: prior existence.
  • 2nd priority: possibility of consumer confusion.

You MUST litigate to keep your trademark strong and protect your TM from any infringement/dilution, or you lose it. Also, a few years after filing the trademark, you have to re-certify that you're using it. Then you just keep on using it. If you stop, and anyone comes along in the future to file a PTO application for it, and you haven't been using or protecting it, the PTO might award it to that future applicant!

It's rare for a trademark to be overturned. Usually that would be in a suit between the two parties. There's also a mechanism for grievances within the PTO. To prove infringement, one must prove confusion [or possibly intent to confuse; this wasn't clear in the lecture.

An application for a trademark is nationwide. So you will need to file an application for the trademark in each country where you may ever want to expand! Technically, you don't have to register federally to get a TM. You can just start selling the product while using the relevant name to get some common-law rights. "TM" just means those common-law rights; the (R) (circle with an R in it) means legally federally filed & registered.