By Ashley Biggs, 3L —
In the United States, trademark rights are based on use. This means that in order for a mark to be yours, you simply need to be using the mark in commerce before anyone else. However, in order to have all the rights and protection that comes with having a trademark, it should be registered with the United States Patent and Trademark Office. The first reason you should register your mark is because it helps you protect the mark against infringement. If a mark is registered, you often have a stronger ability to enforce it. Another reason to register your mark is that it puts the public on notice that the mark is yours and deters them from infringing on your mark.
In order to have a strong mark and avoid the mark being rejected, one should avoid having a mark that merely describes the service or good. Descriptive marks can be difficult to register. For example, if I provide the service of dog walking and my mark is “Miami Dog Walking” my mark says exactly what I do and where I do it. No one person or company is allowed to monopolize that use of a name of a city unless they can prove their use has become distinctive in the minds of consumers, that when I say “Miami Dog Walking” you know it means my company, and not just someone who walks dogs in the 305.
Having a strong mark (i.e. one that is not descriptive or generic) is important because it will increase the likelihood of your mark being approved for registration and it is less likely that people will be able to use your mark. The strongest marks are those that are “fanciful” or “arbitrary.” Fanciful marks are words that are invented words with no dictionary or other known meaning. An example of a fanciful mark is Haagen-Dazs, the famous ice cream brand. Haagen-Dazs was invented because it was Danish sounding, however, does not mean anything in any language. This mark is very strong. Arbitrary marks are actual words with a known meaning, but the words have no association or relationship with the identified goods and services. An example of an Arbitrary mark is Apple, the famous technology company. While apple is a known English word, it generally has no association with technology. Using the word Apple to sell computers and mobile phones is an “arbitrary” use of the word, and thus a strong trademark.
So, my advice to someone considering creating a mark? Protect yourself by using a fanciful or arbitrary mark and then register your mark as soon as you can. The stronger the mark, the better protection you will get.