In Part 1 of this series, we discussed the importance of conducting a trademark search. In Part 2, we explained this idea of the “likelihood of confusion” and what to look for in that trademark search. And in Part 3, we discussed how to register your trademarks with the USPTO. But once your trademark is registered, it’s your job to protect it and enforce your rights. To do so, you must file certain maintenance documents in a timely manner and actively police your trademark.
To recap, in Part 1 of this series, we discussed the importance of conducting a trademark search, and in Part 2, we explained this idea of the “likelihood of confusion” and what to look for in that trademark search. Assuming your trademarks aren’t confusingly similar with that of another company offering related goods or services, how do you go about actually registering your trademark with the U.S. Patent and Trademark Office (USPTO)?
In Part 1, we discussed the importance of conducting a trademark search, preferably before investing too much into a brand only to learn that your trademark cannot be registered or, worse, infringes someone else's trademark. The most common reason for the U.S. Patent and Trademark Office (USPTO) to refuse a trademark registration is because there is a "likelihood of confusion" between the mark you applied for and an already registered mark. Put simply, in order to protect consumers, two trademarks generally cannot be "confusingly similar" to one another.
The question isn't whether your trademark is identical to someone else's. The question is how similar the two trademarks in question are and whether both marks are being used for related goods and services. For example, you wouldn't be able to trademark "McDonald's Burger Joint" for obvious reasons, but you could make a good argument to trademark "McDonald's Financial Services" because burgers and financial services are not related goods or services.
Brand recognition is important to many businesses. Much like larger companies, there are certain things that we hope will cause our customers to think of us and our message. For example, Nike has the swoosh symbol, the slogan “Just Do It,” and even the name Nike. When we see these things, we automatically think about that particular company and its products. And for better or worse, we want the real thing from Nike and not some knock-off counterfeit. And the same is true of service-based businesses. When you hear “What’s in your wallet?” you immediately think of a certain bank.
Think for a moment about what your customers or clients see that they associate with your goods or services. Now think about the time and effort and even money your business has put into that branding, and you’ll immediately understand why it’s so important to protect that brand. In this series, we’re going to discuss just how to do that by registering for and protecting your trademarks.