This is a list of some trademark business considerations for your business.
SUMMARY
- As an e-commerce business doing businesses online and throughout the world, you may want to apply for a trademark to have the most rights possible.
- Applying for a trademark will take some digging to make sure you will not run into any issues with your trademark application.
- The more unique the trademark, the easier it will be to apply for and more rights you will have.
- You should be prepared to protect your brand or you may lose your rights.
USING YOUR TRADEMARK
Before starting to use a trademark, there is a lot of considerations to take into account. Research should be done to see if there are any other trademarks that are similar to the proposed trademark. If a trademark is similar, the applicant should look into whether there will be a “likelihood of confusion” if consumers looked at the trademarks. There are many considerations in determining the “likelihood of confusion.” Some factors include:
- The similarity or dissimilarity of established, likely-to-continue trade channels.
- The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing
- The number and nature of similar marks in use on similar goods
- The existence of a valid consent agreement between the applicant and the owner of the previously registered mark
You should always look for an attorneys advice in deciding the risk of using your trademark.
TRADEMARK APPLICATIONS
A trademark application can be submitted at the United States Trademark and Patent Office. https://www.uspto.gov/. An examiner will look at the trademark and decide if there is the trademark should be granted based non-substantive and substantive issues with the application.
In non-substantive rejections, it will be based on issues including understanding the goods and services, the mark information, description of the mark, and disclaiming a portion of the trademark.
In substantive rejections, the issues will be based on whether there is a likelihood of confusion with other similar trademarks or the trademark is mere descriptiveness. These all have their own complexities and an applicant should talk to a trademark attorney for assistance.
Here is a post on filing a trademark application.
TRADEMARK RESEARCH
To help decide whether a trademark should be used, the applicant should determine if the trademark is 1) unique and 2) whether there will be a likelihood of confusion.
If the trademark is generic or mere descriptive, that is if the mark merely describes the services or good that it provides, then it will be provided less protection or even no protection than if it was more unique. For example, a trademark, “Salty,” for a brand of salt will be descriptive of what the goods is.
If the trademark is suggestive, arbitrary, or fanciful, the trademark may receive stronger protection than those which are just generic or descriptive. Suggestive, arbitrary, or fanciful are trademarks that are more than descriptive including the mark suggesting the service or goods but not describing it, words that do not describe what the service or goods actually is, or made up words. For example, a suggestive mark would be “Airbus” for planes. It does not describe the goods but it suggests that it is related to a vehicle in the air. For arbitrary marks, a good example is “Apple,” which is a mark to describe computers not the fruit apples. In the case of fanciful marks, the mark will be a made up word that had no meanings before it was used in the mark.
ENFORCEMENT RIGHTS
There are enforcement rights for trademarks, however, it will be up to the trademark owner to enforce the rights. That includes searching the market to make sure there are no other businesses using the trademark or a business that will cause confusion with the trademark. An infringement action, filed in court, can be taken against the business who is using the trademark or causing confusion. If there is a trademark that is potentially infringing, you should contact an attorney determine the strengths of your claim.