Did you know that registering a trademark doesn’t always mean you can protect your brand name, product name, logo, or other marks? Believe it or not, you can obtain a trademark registration but in the future, if someone infringes on your trademark rights, you might not actually be able to do anything to stop them.
The reason is simple. If your trademark is too descriptive, then it’s really hard to enforce your trademark rights.
For example, if you owned a candy company and managed to trademark the name “Candy Bar” as the product name, your trademark would have far less strength in terms of protectability than if you named your new product something non-descriptive such as a made up word (like Google did in naming its company and search engine) or a completely irrelevant word (like Apple did in naming its company and technology brand).
That’s because using the trademark name “Candy Bar” would preclude anyone else from using that term in the industry. In the candy industry, making it impossible for anyone else to use the term “candy bar” in any way would be outrageous. Therefore, the trademarked name would have little or no protection.
Trademark Distinctiveness as a Measure of Protectability
In trademark law, you can get varying levels of protection for your marks based on how distinctive they are. It can get confusing, so Women on Business contributor Kelley Keller, Esq. developed The Spectrum of Trademark Distinctiveness infographic (shown below) to help you make sure you choose strong marks that qualify for maximum levels of protection in the future.
Think of the spectrum of trademark distinctiveness as a fence that your mark needs to climb over. On one side of the fence are marks that cannot be protected or have very little legal protection. On the other side of the fence, are marks that can be protected to varying degrees. You want to not only get over the fence but as far past it as possible.
It’s also important to point out that the way your trademark application is completed can have an impact on the protectability of your mark. Beware of do-it-yourself services because just getting a trademark registration doesn’t necessarily mean that you’ll be able to fully protect it in the future.
Distinctiveness is just one factor that could affect your mark’s protectability, so be very careful. Making mistakes up front could cost you a huge amount of time, money, stress, and heartache in the future.
You can follow the link to read more about The Spectrum of Trademark Distinctiveness and view it below.
Source: Kelley Keller, Esq. via KelleyKeller.com
Brigitte Kobi says
I did a trademark protection once. Apart from being discriptive (meaning a grocerer cannot apply for the name “Apple” because it is a description for an important product of all other grocerers while there is not problem for a computer; as we know :-))
However, you have to decide if you want to protect the name only for one country, for several or even world-wide. For one country is (at least over here) quite easy and you can check the database for duplicates etc. yourself. But if you decide do go international – and want your name to be registered for the entire European community or even world-wide you need an army of lawyers trying to make sure you do not “disturb” anyone. So this is a real investement. And it is risky during the first 2 years. During this persiod everybody (at least in Europe) who feels you have stolen something from him/her can take legal step and claim the name.
If it comes to patents for new inventions the process is a lot more complicated.
Kelley Keller says
Hi Brigitte —
Thank you for your comment. Great example about the word “apple”!
You raise an important point about international protection. Many regions throughout the world treat trademarks differently, so it is extremely helpful to have professional assistance. As you may know, the “Community Trade Mark” (CTM) unified trademark registration system has greatly streamlined trademark protection in the European Union. I know that my clients really appreciate being able to file a single application that covers every EU country. This really reduces legal fees as well since one firm can handle the process. I’ve also found that paying for a professional trademark search before filing a new trademark application — in any country or region — helps to get a “lay of the land” and predict who might try to come after you. Paying a monthly fee for a professional “watch” service to monitor your mark once its filed can pay off as well in case you need to tell others that they are infringing on your rights. But, that said, because we have different types of legal systems (particularly continental Europe and the United States), things can get a little tricky. I am grateful to work with some really excellent European law firms to help take care of my clients doing business there who simplify the trademark process for them and make it much more manageable.