A trademark is any word, name, symbol, or design used alone or in combination to identify and distinguish goods as to their source. Trademarks help a business to distinguish its goods and services from others in the market. Customers rely on trademarks to make decisions about the goods and services that they patronize.
An intellectual property (IP) strategy is a critical part of any business plan. It is clear that even small businesses cannot afford to ignore the IP aspects of their business as they struggle to gain visibility in the competitive digital market. With the push for businesses to increase their brand value through legal protections such as trademark registration, it is important to understand some of the details involved in trademark registration.
What is the Difference Between a Trademark and a Domain Name Registration?
Some people erroneously believe that once they have secured a domain name that represents their brand name, they are all set and have secured their rights in the name. Unfortunately, that’s not the case. A domain name holds a space for your business on the web, where people can find you. It does not necessarily act as an identifier as the source of goods or services and does not give you any trademark rights in the name. In fact, you could be forced to give up a registered domain name if it is found to infringe on the rights of a trademark owner with the same or similar name. It is a good idea to do a trademark search before you register a domain name to avoid problems down the line. The USPTO has a free trademark search system. And if you have your sights on the global market, the World Intellectual Property Organisation (WIPO) has a free global brand database.
When you buy a domain name, you can sit on it while you try to figure out to what use you will put it. Some people buy domain names with the intention of selling it for a profit if or when the name appreciates in value because another business wants to buy it from them. You don’t have the same luxury with trademarks. If you successfully register a trademark, you must use it or you could lose it.
Trademark Registration Requirements
To get full legal protection for your brand identity, you must have a registered trademark for those symbols that are unique identifiers for your goods or services. Words, names, symbols, designs, and, for some businesses, even colours and sounds are brand identity markers that can be trademarked. Names are typically the trademark starting point for small businesses so let’s focus on that.
Probably the top consideration of any trademark registration office when considering new applications is the likelihood of confusion. Does this trademark look or sound like an existing trademark used for the same or similar goods and services? Is this the same word or name as one that already exists for goods and services in the same class? How likely is it that this new trademark will cause confusion in the market? Keep in mind when looking at words and names, that consideration is given to both the spellings and the pronunciations. For instance, Que Ball and Cue Ball, are spelled differently, but they sound the same when spoken.
Strong Marks vs. Weak Marks
Some marks will have an easier time in the registration process than others because they are considered to be strong marks. Fanciful and arbitrary marks are the strongest options when choosing a name.
Strong Marks
Fanciful marks are made up words with no dictionary or known meaning. Examples of fanciful marks are Xerox, Adidas, Exxon, and Pepsi.
Arbitrary marks are existing words with a known meaning used for unrelated goods or services. Apple comes to mind as an example – the name of a fruit for a computer brand.
The next best option is a suggestive mark. These suggest some quality of the goods or services without expressly stating the quality of the goods or service. For example, Greyhound for a bus service, relying on the qualities of speed and agility associated with the Greyhound dog breed. If you’re traveling, you want your transportation service to get you to your destination quickly!
You may have some difficulty registering your trademark if it doesn’t fall into one of these three categories – fanciful, arbitrary, or suggestive.
Weak Marks
There are two other categories that you should avoid – descriptive and generic marks – because your application is likely to be unsuccessful if you choose names in these categories. They are referred to as weak marks. Another reason to avoid them is that they are difficult to police and expensive to protect.
Descriptive marks are those that merely describe the goods or services without any other distinguishing identifier as to their source. For example, Buttery Bread on its own doesn’t tell a consumer anything about the source of the bread. All a consumer knows is that it is getting buttery bread, but not necessarily who they are getting the buttery bread from. A descriptive mark may gain distinctiveness in the market over time as consumers associate it with a particular source. But, that requires a lot of marketing dollars to create that association and gain distinctiveness.
Generic marks are the common names of goods and services and are not registerable. For example, you couldn’t register the name Bicycle for bicycles or Blue Jeans or Cake Shop. Over time, some trademarks have been tripped over by genericization where the mark is used to refer generically to all other similar goods and services. Examples of some victims of genericization include Escalator (moving stairway), Kleenex (tissue), Kerosene (liquid paraffin), and, some would argue, Zoom (although it’s kind of early to say but Zoom seems to be generally associated with video conferencing, no matter whether you are using Zoom itself or other video conferencing services like Teams or Google Meet).
If you are planning to build a brand with the same domain name, you should first search the relevant trademark registers and make sure that you are clear to take off with your chosen domain name.
