Trademark Basics: 10 Tips You Should Know and Apply Now
Trademarks can be difficult to figure out for first-time founders. When do you need one? What category should you file in? What is actually covered by trademark protection? And how can you enforce a trademark once it’s filed? It can all be very overwhelming. Therefore, New Voices and the US Trademark and Patent Office set out to help you begin to understand the process.
On Thursday, June 8th, 2023, New Voices Learning Lab LIVE: “Trademark Basics: What Every Small Business Should Know Now, Not Later” with Mariessa Terrell of the U.S. Patent and Trademark Office took place. Here we’ll outline the top ten  most useful tips from this informative session. Watch the full session to get a complete picture.
#1 Standout from the crowd.
When registering a trademark, nondescriptive is the goal. Generic or commonly used phrases and adjectives are unregistrable. These terms are generally refused based on the failure to function rule. This means the word is too common in everyday society to evoke thoughts about your product. Lean toward fanciful (made-up words) or non-common descriptors for your industry i.e. Apple for computers, as these make for strong trademark applications.
#2 It DOES matter if your mark is Black and White.
It is advised that you register your trademark in Black and White.
“If a trademark is registered in Black and White, it can be used in any color”-Mariessa Terrell. “It is a part of our [USPTO] rules.”
Therefore, this safeguards your brand from copycats that might attempt to use your mark with different colors. It also allows the brand a certain amount of freedom in playing with the colors associated with its mark and branding efforts.
#3 You don’t own that word.
Trademarks are ALWAYS tied to goods and services. Your trademark will only cover the use of the words in the mark or attached to the mark if it refers to goods and services in the marketplace, and its legal coverage is limited specifically to the use of the word for that purpose. Thus, you cannot prevent people from using a phrase or word attached to your mark in common speech or writing. Your trademark covers using the word as it pertains to commerce exclusively.
#4 Tradition is fairly straightforward.
If you’ve never thought about what trademarks are or can be comprised of, it’s important to understand that they can be both traditional and non-traditional. Traditional trademarks typically include marketing tools such as logos, brand names, and slogans—words and images. However, there are several categories of non-traditional marks (see #5).
#5 Trademarks are not limited to words and images.
Non-traditional trademark types include sound, color, scent/smell, motion, hologram, and configuration/shape. You can trademark your product’s sound, scent, or even shape/configuration.
For example, a thread company that makes lavender-scented thread has trademarked the scent of their product. The Coca-Cola bottle shape and MGM’s lion roar are trademarked. Tiffany blue and Christian Louboutin’s signature red bottom shoe soles are also trademarked.
#6 Symbols are important. Use the right one!
The use of the trademark symbol indicates a common law trademark. This is not registered but is considered regular use and valid within your geographical location. The registered symbol is exclusive to USPTO-registered trademarks and can be enforced nationally.
#7 Avoid confusion.
The likelihood of confusion must be considered when filing your trademark application. If an existing product in the same industry/class as your product has a mark that looks, sounds, or could be easily mistaken for your mark, it will probably be refused under the likely to confuse rule. This means it might cause consumers to be confused about which product they are buying.
“The United States Patent and Trademark Office (USPTO) examines every application for federal registration of a trademark for compliance with federal law and the Trademark Rules of Practice. One of the most common reasons for refusing registration is that a “likelihood of confusion” exists between the mark in the application and a previously registered mark or a pending application with an earlier filing date owned by another party.
The likelihood of confusion exists between trademarks when the marks are so similar, and the goods and/or services they are used are so related that consumers would mistakenly believe they come from the same source. Each application is decided on its own facts, and no strict mechanical test exists for determining the likelihood of confusion.”–USPTO
#8 You don’t have to make twins.
A business’s name and trademarks do NOT necessarily have to be the same. A business name is a company’s officially registered name, while a trademark is a form of legal protection for that name, preventing it from being used by another business.
A business must register the name within its state, and, as long as it is distinguishable from any other business name within the state, the business will be recognized under that business name.
A trademark, on the other hand, is not a name, but property. A trademark is generally used to brand a certain good or service and has a value its own value. A trademark makes a particular product produced by your business recognizable to the consumer but does not necessarily need to be identical to or mirror your business name in any way.
#9 U.S. Trademark protection is NOT international.
A U.S.-registered trademark covers your brand nationally. However, once your U.S. trademark is approved and operational, you could use it as a basis to file trademarks in other countries. It might help to strengthen your application but does NOT cancel out/ provide protection for or supplement the need to file individual trademarks in different countries.
#10 You don’t have to get a trademark!
Trademarking is a choice. Many businesses operate under common law trademarks without ever officially registering. A common law trademark is established solely through use in commerce in a specific geographical area. Business names, logos, and phrases that are regularly used–even though they have never been federally registered–can all be considered common law trademarks. These trademarks are protected by their consistent and constant use in the marketplace and are enforceable due to the demonstrated history of constant and consistent use. What this means is although another person could attempt to file an official trademark for a common law trademark in the same industry, it is likely to be rejected on the basis that it would be unenforceable because a brand has long established the use of said mark in the marketplace over a particular time period.
For more useful tips and information about filing a trademark, WATCH the full New Voices Learning Lab LIVE: “Trademark Basics: What Every Small Business Should Know Now, Not Later.”