The benefits of a registered trademark are clear: greater confidence that you aren’t infringing on an existing mark, greater confidence in the strength and validity of your mark, protection against infringement, public notice of your registration, and legal grounds for trademark enforcement, to name a few.
“The name of your cleaning service can be a trademark, but so can the name of your cleaning spray”
The question of when to register certain marks, however, is not as clear as one might think, even in light of all of these benefits. Frequently, the issue of what types of marks can and should be registered arises, especially in the retail realm. More specifically, the question arises of when to register a company name and when to register a product name trademark. As you read on, you’ll learn when it benefits you to register each.
Let’s start with the easier question: registering a trademark for your company name. In short, you should always register a trademark for the name of your business. It’s the “face” of your company, the first touchpoint for most customers, and the primary way in which you’ll be identified. The risk of confusion runs high in most cases, and no company can afford to lose profits when potential customers end up doing business with another merchant when they intended to do business with you.
It’s difficult to conceive of a case where a business would not want to register a trademark for their name. Even if you’ve been operating under, or considering, a name at the weaker end of the trademark strength spectrum (descriptive or generic), it’s frequently a better idea to choose a different, stronger name to trademark, rather than relying on the weak provisions affording minimal protection to unregistered trademarks. The lost time and resources involved in resolving trademark conflicts when you have an unregistered mark far outweigh any potential brand equity or other perceived reasons not to change your name to one that would be easier to register.
If it’s always a good idea to register the name of your company, does the same answer go for product names? In most cases, yes. Many companies choose to create original, distinctive names for their products in order to provide a second layer of identity. Often, these names will meet the qualifications for strong trademarks: they aren’t generic or descriptive of the product, but instead refer to it in a more abstract or unrelated way. Think of cosmetics with original, unique names for certain hues, or the different ways beverage companies will refer to generic drinks like cola or lemon-lime soda.
If your company creates products with those types of distinctive names, then it’s a good idea for you to look into registering trademarks for them. A registered trademark for your products will provide additional protection against imitators and counterfeiters, and helps ensure that your product name remains associated with your company and your company alone. Here are some additional points to consider on registering trademarks for product names.
Be sure that the product name is actually capable of receiving trademark protection
Remember that any name that can be considered generic is not able to be trademarked. Be sure that your product name is truly distinctive – a good rule of thumb is to follow the USPTO trademark strength conventions. The more the product name describes the product itself, the weaker the trademark is.
Be aware of the requirements for the trademark application for your product.
When you submit a trademark application for your business name, your application (or applications) covers several things, primarily what classes of goods or services your company deals in, and how the company mark will be used to identify those goods or services in commerce. Your trademark application for a product name will cover the same factors, but at a much more specific level, dealing only with the product in question. It’s important to make sure that you remain accurate in what class (or classes) of goods the product resides in, and to be thorough, complete, and specific in how the product trademark will be used as an identifier. This is why it is generally a good idea to hire a trademark attorney to assist you with the registration process.
Enforce your product trademark as stringently as you do that of your company.
Product trademarks are just as vulnerable to infringement as company trademarks are. Also remember that potential infringers might illicitly use the name of your product as the name of their company, and vice versa. This still constitutes trademark infringement, as does any case where a consumer could potentially be confused as to the source of a product or service. There are no “walls” between product-level trademarks and those for companies – they are all concerned with preventing confusion and protecting consumers and rightful trademark owners.