One of the biggest difficulties, indeed roadblocks, to name development is the high likelihood that the brilliant name that came to you in your sleep last night is already trademarked.
In saturated categories like consumer products, healthcare, and technology, trademark “knock-outs”, or eliminations from consideration due to existing trademark conflicts can approach 90%! What’s more, in the United States, even if the trademark does not show up in the United States Patent and Trademark Office (USPTO) database, a trademark conflict can still exist. Finally, if the trademark will be used internationally, various trademark laws must be considered.
So what are the considerations for trademarks? Often the intended geographic scope of your trademark use, and who the owners of existing trademarks are will determine whether you can use a brand name that is already trademarked. Consider whether trademarks are local or national, business-to-business or consumer, domestic or international.
Large consumer product corporations are sophisticated in trademark law and will vigorously defend their trademarks. Local businesses typically do not even register trademarks, but can prove first usage and legally defend a trademark locally.
Best advice, if you are marketing your company or product nationally (within the U.S.), screen trademarks using the United States Patent and Trademark Office (USPTO) website at: http://www.uspto.gov/. Select the trademarks link or: http://www.uspto.gov/trademarks/index.jsp. Click on search, and enter your name or tagline (trademark) candidate.
The database will show all trademark registrations, along with words close to the search term(s). Importantly, the database will also display whether the trademark is Live or Dead. Obviously dead or non-active trademarks are not a conflict. Click on live trademarks that are an exact match to your candidate and evaluate whether the description of “Goods and Services” represents a conflict.
International Trademarks
For international trademarks, the World Intellectual Property Organization (WIPO), based in Geneva, Switzerland, is the administrative body. Per the WIPO website: “The WIPO-administered Madrid System for the international registration of trademarks offers a trademark owner the possibility of having a mark protected in up to 80 countries by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs).
Applicants wishing to use the Madrid system must apply for trademark protection in a relevant national or regional trademark office before seeking international protection. An international registration under the Madrid system produces the same effects as an application for registration of the mark in each of the contracting parties designated by the applicant.
If protection is not refused by the trademark office of a designated contracting party, the status of the mark is the same as if it had been registered by that office. Thereafter, the international registration can be maintained and renewed through a single procedure. Thus, the system provides a cost-effective and efficient way for trademark holders to secure and maintain protection for their marks in multiple countries.”
“The system is governed by two international treaties, namely the Madrid Agreement and the Madrid Protocol. The grouping of both agreements is referred to as the Madrid system. The Madrid Protocol which became operational in 1996 introduced several features including the ability to submit applications in English and to extend the period for notification of a refusal. Spanish was introduced as a working language in 2004. These features made the system more flexible and attractive to a larger number of countries. The total number of countries party to the Protocol is 75 and the overall current membership of the Madrid system is 82 (81 countries plus the EC).
Generic Trademarks
A primer on trademarks would be incomplete without considering those names that have become synonymous with the entire product category. A “genericized” trademark, also known as a generic trademark, is a trademark or brand name that has become the colloquial or generic description for (or synonymous with) a particular class of product or service.
A trademark typically becomes “genericized” when the products or services with which it is associated have acquired substantial market dominance or mind share. The term is legally significant in that unless a company works sufficiently to prevent such broad use of its trademark, its intellectual property rights in the trademark may be lost. Specifically, a company must always use the trademark as an adjective modifying a noun that describes the product.
Following are some of the often-cited generic trademarks:
| Kleenex® | Synonymous with tissues | A registered trademark of Kimberly-Clark. |
| Band-Aid® brand adhesive strips | Synonymous with adhesive bandages. | A registered trademark of Johnson & Johnson. |
| Formica® | Has become a trade name for countertop laminate. | A registered trademark of Formica Corporation. |
| Jacuzzi® | Has become the generic name for whirlpools. | A registered trademark of Jacuzzi. |
| Jell-O® | Most likely derived from the word gelatin or jelly. | A registered trademark of Kraft Foods. |
| Popsicle® | Has become the generic name for frozen ice pops. | A registered trademark of Unilever. |
| Rolodex® | Has become the generic name for an address information indexing system. | A registered trademark of Sanford and Newell Rubbermaid. |
| SheetRock® | Synonymous with gypsum board or drywall used in construction. | A registered trademark of USG Corporation. |
| Spackle® | Has become the verb for repairing drywall. | A registered trademark of the Muralo Company. |
| Tabasco® Brand Pepper Sauce | Has become the generic name for any spicy pepper sauce. | A registered trademark of McIleney |
| Teflon® | Derived from the chemical Polytetrafluoroethylene. | A registered trademark of DuPont. |
| Walkman® | Has become the generic term for the personal cassette player. | A registered trademark of Sony. |
| Xerox® | “Xerox” has become the verb for photocopy. | A registered trademark of Xerox. |
With trademark legal search and opinions completed, you can confidently select your final name, and complete the trademark registration process. For U.S.-based trademarks, you can prepare and submit your trademark application electronically, at a standard fee charged by the USPTO.
