trademark

All posts tagged trademark

Guidelines for Picking a Company Name

An emerging company’s name can be as important as its product. Names, logos, and branding can have an extraordinary effect on individuals and businesses, as consumers, and can shape the marketplace so directly that a nonsensical word like “uber” can come to identify a multi-billion dollar company. Since company and product names can be so powerful, it is important to be deliberate and intelligent in naming your startup.

The best protection for a company or product name is a trademark, but not all trademarks are alike. Names that are arbitrary or fanciful have the greatest trademark protection. Fanciful marks have no meaning and exist only for the purpose of branding.  Whereas, arbitrary marks have a common meaning, but do not describe the product or service itself. Examples of fanciful marks include Exxon and Kodak – words created for the purpose of branding. An example of an arbitrary mark is Apple – the common meaning of the word related to fruit has nothing to do with computers and electronics. Arbitrary and fanciful names have the highest levels of protection, and are therefore great assets for companies.

The next level of trademarks are suggestive marks. These marks may be desirable for companies because they can speak to the nature of the products, thereby notifying consumers of the nature of the goods or services being provided. For the same reason, the trademark protections are not as strong. Examples of suggestive marks are Greyhound for the bus line and Jaguar for the automotive company. These marks suggest the nature of the good or service, but require “imagination, thought and perception” from consumers. Suggestive marks can be difficult to trademark, however, because the line between suggestive and descriptive marks is sometimes hard to define.

The US Patent and Trademark Office is disinclined to issue trademarks for descriptive marks – unless they obtain secondary meaning. Just as the name suggest, descriptive marks speak directly to the good or service provided. These marks cannot be trademarked until a company can prove that the name has acquired a secondary meaning where consumers associate the name with a particular product, which usually requires five years and significant advertising budgets to prove. Startups without the luxuries of time and money are encouraged to avoid descriptive marks.

The last category of marks are generic marks. The US Patent and Trademark Office does not issue trademarks for generic marks and there are, therefore, no protections for these marks because they directly and generically describe the company’s product or services. The name “Emergency Dental Center” would never pass for an office that provides emergency dental services because it is completely descriptive of the services.

Startups should think very carefully before naming their company and products. A fanciful or arbitrary name can usually be easily trademarked and provides the company with the greatest extent of protection. A strong name with high levels of protection is likely to become one of the greatest assets for an emerging and developing enterprise.

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George A. GellisGuidelines for Picking a Company Name

Do you need to #trademark your hashtag?

Trademarking hashtags has emerged as an important topic of conversation online and amongst business owners. The conclusive decision is that hashtags can be trademarked through the United States Patent and Trademark Office (USPTO). In fact, a quick search of the US Patent and Trademark Office database shows over 200 already registered hashtags. However, the benefit of trademarking a hashtag remains dubious.

Trademarking a hashtag can be a long and laborious process. Hashtags, conversely, are often sparked by a temporary occurrence or campaign, and fade rapidly. Additionally, a hashtag must be associated with a good or service provided to the public (within one of the UPSTO’s 45 classes) to be trademarked. The enforceability of the legal benefits is also questionable. The public uses hashtags with (reckless) frequency on several social media platforms now. Though Twitter has a trademark policy, it is rather vague – saying only that “using a company or business name, logo, or other trademark-protected materials in a manner that may mislead or confuse others with regard to its brand or business affiliation may be considered a trademark policy violation.” (emphasis added)

While the benefits of trademarking a hashtag may be unclear, it is important for businesses to note that some companies take hashtags very seriously. As in other trademark infringement cases, companies can receive cease-and-desist letters from other business’ attorneys for hashtags that conflict with registered trademarks or hashtags. Before launching a marketing campaign or social media strategy, companies should do their due diligence to ensure that the proposed hashtag does not conflict with a registered mark. Quick searches can be done through online services such as Twubs or hashtags.org, but a thorough search of the USPTO’s database is advisable.

Hashtags have infiltrated all realms of social media and popular culture. Businesses must now be very aware of the implications of hashtag usage. Whether to trademark a hashtag is an important discussion for marketing and legal teams. However, the more pressing concern is ensuring that hashtag usage does not result in legal conflict with a trademark owner. No matter how companies decide to approach hashtags, they must be mindful in their approach, as hashtags are now soundly established as intellectual property.

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George A. GellisDo you need to #trademark your hashtag?