5 Steps to Trademark a Jewelry Brand

By Josh Gerben, Esq.

Trademarking your jewelry brand is an important consideration when you set out in that industry. As anyone who’s ever wondered whether a ring or a necklace was the genuine artifact knows, there’s a lot of competition in the jewelry world to stand out as a desirable brand – whether that means high-end, trendy, cutting edge, or any number of other distinctive traits that set a piece of jewelry apart. So when you decide to start your own jewelry business, you’ll want to file for a federal trademark as soon as you can to prevent any confusion between your brand and another – and to protect your business from losing any sales due to possible confusion. Follow these five steps and you’ll have the best chances of a successful trademark filing.

 1) Determine the aspects of your jewelry brand that you can trademark.

The first one is easy – your brand name. It might be your name, a variation, or some other word, phrase, or term. The keys are that it’s original, distinctive, and non-descriptive – in other words, “Sparkle Jewelry” would not be a good choice for a brand name. “Sparkle” is a generic word closely associated with jewelry, and it would likely be impossible and unfair to reserve it as a trademark for one person or company’s use.

There are other aspects of your business that you can trademark, as well. If you decide to use a logo, you can trademark that, in conjunction with your brand name or as a standalone mark. Trademark law also allows you to protect distinctive elements of your products’ “dress” – the packaging you use, the way it’s presented in that packaging, and the design of the packaging.

“Trade dress” protection has also expanded under trademark law rulings to include certain design aspects of your jewelry itself. Essentially, if the overall impression of a design (not specific elements of it) can be considered and proven to be associated exclusively with your company, it can be trademarked as well.

2) Conduct a trademark search to ensure originality of the jewelry trademark.

Depending on what you decided to trademark, this step may consist of several searches. You’ll have to make sure that the name you’ve chosen is not in use by any other jewelry company, or any other business that could be confused with yours. You’ll also need to make sure that your logo is distinctive and not already claimed by someone. And if you’ve decided to file trademarks for any “trade dress” elements, you’ll need to research those as well. The United States Trademark & Patent Office assigns codes to various design elements that can be used to research each element of trademark filings for marks that aren’t text-based.

 3) Consult a trademark attorney.

Filing a trademark for a jewelry brand can quickly become complicated. As you’ve seen, there are several different marks that can comprise a brand that can be protected. The research process for design elements can be confusing. And the search tools provided to the general public – even those on the USPTO website – are often not sufficient to detect alternate spellings or vowel usages, soundalikes, or marks similar enough to throw your application into jeopardy. A trademark attorney will be experienced in the complexities of the research process, and will have the proper resources to determine with greater confidence that your trademark filing stands a good chance of success.

 4) File your trademark application with the USPTO.

After your initial steps of preparation, you’re ready to fill out the proper forms and submit the materials required by the USPTO. The applications you submit and any supporting materials will be determined by what, exactly, you want to trademark. If you’re simply trademarking your company name and want broad protection of that mark, you’ll submit it in “plain text” format. You’ll also need to show how the name is used in conjunction with your product – whether that’s on a jewelry case, for instance, or another type of packaging. If you’ve developed a logo or a specific stylized version of your name, you’ll have to submit applications with examples of those in use, as well. And any “trade dress” that you wish to trademark should be described and illustrated or shown. The key with filing your trademark application is to ensure it meets all the technical requirements of the USPTO.  If you do not properly address all the technical elements of a trademark application, your application could be delayed, or, refused registration.

 5) Follow up on your trademark filing 

Your trademark application will normally take six to eight months from the time of submission to be approved. Keep in mind that your preliminary steps prior to submission will take some time as well, so it’s a good idea to be proactive in starting the process. Once you send your application to the government, it will be reviewed to ensure that you’re not infringing on any existing marks already registered (purposely or not). If your application seems to be taking an exceedingly long amount of time outside of that eight month time frame, you or your attorney should check its status, but remember that the review stage takes time. Other than that, your follow up responsibilities include establishing and protecting all aspects your trademark once it’s approved, to ensure that no other company or individual attempts to use your trademark in the marketplace.

One very prominent jewelry outlet ran into that problem recently, when a discount store sold jewelry using the jeweler’s name to describe a distinctive feature of the stone’s setting (other than that, the discount jewelry had nothing to do with the prominent jeweler). A trademark is meant to protect your brand and identity as a provider of goods and services, and the jewelry company felt that having their name associated with a discount outlet would damage the value of their brand. The court battle is still going on, but it illustrates the necessity of trademark protection and maintenance.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.