Trademarking Your Brand 101

What to trademark, when to trademark & what to avoid

Today we’re super excited to have a Trademarking 101 sesh with Amy Goodwin of Day Law Firm on the SHELF Life Blog.

Amy has guided thousands of clients through the trademark registration process and is highly skilled in formulating and interpreting trademark registrability searches, as well as helping clients understand their options in a wide variety of trademark situations.  You name the product or service and she’s probably had a hand in helping find a trademark for it.

SHELF Studio: We want a trademark. Where do we start?

Amy: The most important consideration when looking for assistance in filing for a trademark is to make sure you hire an attorney.  An attorney is able to understand the laws that surround trademark rights and what might affect an individual filing, offer legal advice and help you avoid pitfalls with your application. 

Unfortunately, there are a lot of misleading private companies that will take your money and offer zero legal support to your filings.  The USPTO (United States Patent and Trademark Office) has been cautioning applicants as the number of these private scam companies has been climbing. 

SHELF Studio: When naming a brand, we often get asked if they can change the meaning of a name (blue vs bleu) to be more ownable. Can you explain why a name like HYDR8 doesn’t change the word’s meaning?

Amy: When a consumer views a trademark, there are certain thoughts and feelings that come to mind and that is what you are trying to protect with a trademark.  If I was able to register the trademark LOVE for tires, then any variation of that term would give the same thoughts and feelings and would therefore cause a consumer to think they come from the same source.  I could enforce my rights against anyone who tried to adopt LUV or AMORE or AMOR for tires, since the overall idea is the same.

SHELF Studio: Interesting! Ok, when does a name infringe on another name’s trademark?  Ex: If you want to name a water blue but there is already a beer called blue.

Amy: Ideally, when choosing a new mark, you will want to select one that is distinctive, to provide you with the strongest protection.  That way you can protect yourself and avoid infringement of other companies’ rights.  If the mark already connects with someone else, then you should not choose it.  The best trademarks are ones that are fanciful, arbitrary or suggestive. 

Fanciful examples – PEPSI for soft drinks, EXXON for fuel, POLAROID for cameras, GOOGLE for online services and XEROX for photocopiers. 

Arbitrary examples – Apple for computers, DELTA for transportation services, CAMEL for cigarettes, and CATERPILLAR for heavy machinery. 

Suggestive examples – NETFLIX for film streaming service, AIRBUS for airplanes, Q-TIPS for cotton-tipped swabs, and COPPERTONE for sun tanning lotions.

SHELF Studio: Thanks for the examples- makes sense. That leads us to a couple questions – Can you explain why AGUA and WATER are not ownable to trademark as basic words? Why is trademarking a name to become a brand important for retailers?

Amy: Protecting the development of your branding is always important.  It is how a consumer recognizes the source of the product/service they are buying.  The more you can build your brand around something you can protect, the more equity you establish.  For example, the GOOGLE trademark has an estimated value of $44 billion dollars; WALMART is $36 billion dollars; WELLS FARGO is $28 billion dollars.  These companies built that worth over time because they were able to protect their brand names.  You will notice that these are strong terms and not descriptive or generic terms.

SHELF Studio: Is there a percentage of risk that makes it not worth trademarking?

Amy: Everyone has a different tolerance for risk and it depends on a lot of variables. 

SHELF Studio: Indeed. Should you trademark the name, tagline and/or logo mark? Is there anything else a client should trademark?

Amy: You should trademark anything that you use to connect your brand to your product or service.  Taglines and logos are just as important to protect.  If you see I’M LOVIN’ IT, most people immediately associate it with McDonalds.  The same goes for other taglines.  For example; AMERICA RUNS ON DUNKIN, or BECAUSE YOUR WORTH IT, or CAN YOU HEAR ME NOW? or OPEN HAPPINESS. 

Most small or start-up companies should start with their main brand first and then keep adding to their portfolio based on their budget constraints. 

SHELF Studio: My CPG startup is budgeting for vegan queso dip. What’s the ballpark for an attorney with TM experience? 

Amy: Should expect to pay around $1000 for a good trademark experience with an attorney handling the matter. But of course, this ranges by location and expertise.

SHELF Studio: Ok, two questions here. How does one get an international trademark? How do we know if a logo exists in another country with our TM identity?

Amy: There is no such thing as an “international trademark.”  Each country has its own trademark laws that you must abide by if you want protection.  If you plan on doing business in a foreign country, then you should look at protecting your mark in those countries.  Just like the US, you can have foreign counsel conduct searches to see if the mark is available.

Few takeaways here: Budget for an attorney, there’s no such thing as an international trademark and don’t be fooled by companies that say they do trademarking.

A HUGE shoutout to Amy for dropping all this trademark knowledge with the SHELF Studio crew. Now go out there and get that brand trademarked!

Have more trademark and branding questions left unanswered?

Leave ‘em in the comments below or reach Amy at Day Law Firm.

About Amy Goodwin

Amy has guided thousands of clients through the trademark registration process and is highly skilled in formulating and interpreting trademark registrability searches, as well as helping clients understand their options in a wide variety of trademark situations. You name the product or service and she’s probably had a hand in helping find a trademark for it. She currently is a Trademark Paralegal as well as a Client Relations Manager for Day Law Firm in Scottsdale, Arizona.