Unless you were hiding away in some remote location this summer, you probably heard about the ALS Ice Bucket Challenge. You may have even participated in this viral phenomenon, which as of this writing has raised over $114 million dollars.
However, you may not have heard that according to a Fortune article, the ALS Association tried to trademark the “ice bucket challenge” and “ALS ice bucket challenge” slogans. These trademarks would have given them the right to control usage of the terms.
According to the article, there was a less than positive reaction to news of their attempts. The records at the U.S. Patent and Trademark Office (USPTO) show that the applications were expressly abandoned by the applicant. Luckily, the average trademark application will most likely not spark quite as much drama.
What Is a Trademark?
Trademark registration is of vital importance to any business. According to the Trademark Office, a trademark is “a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.”
After a business puts a great deal of time and money into developing something new, it is necessary that the consumer knows exactly who is selling the product. Confusion by the public as to which business is selling the particular goods that they are buying is bad for consumers and negatively impacts commerce. Read more on "What is a Trademark"
Over the last few summers, you may have wondered why the sudden variety of “pops” for sale by many vendors. They can be called, fruit pops, ice pops and other types of pops, but not Popsicles. Popsicle® is a registered trademark of Unilever and no other business can use that term for their product.
USPTO Trademark Search
As an organization decides the names of their products and other identifying slogans or symbols, they need to make sure that those are not already in use, so that there will be less likelihood of confusion. A trademark search can help accomplish this goal.
A basic trademark lookup of registered trademarks can be done for free on the USPTO website with their Trademark Electronic Search System (TESS). You can also conduct a search at a Patent and Trademark Resource Center. There are locations all over the country. The USPTO Design Search Code Manual can also be searched for different logos and designs that may be part of a trademark.
Note that USPTO will not do a search for you prior to your filing your trademark application. However, they will do a search after your filing, but will not register your trademark if there is already another registered or pending trademark that is similar to yours.
It’s also important to remember that TESS is a federal trademark search and “contains the records of active and inactive trademark registrations and applications.” The status of the application will show if it is registered, pending or abandoned. The search does not stop here though. A comprehensive trademark search requires more.
Trademark Search Tips
For your trademark search, create a list of words that describe your product or service that will be sold along with the trademark. Include your company name and brand names as well in your search. Consider words that sound the same as your prospective trademark and those with unconventional spellings.
Find specific terms using the online Acceptable Identification of Goods & Services Manual. Further detailed guidance regarding your search strategy and international protection can be found at the USPTO website on how to conduct a trademark search.
ICANN is the Internet Corporation for Assigned Names and Numbers. On their website, you can find out if a particular website domain name is being used and who owns it.
Do a simple Google search of your list of words and prospective trademark to see what comes up. Sometimes a trademark may not be registered, but is already in use and common law rights may have been established that could prevent registration by your company and/or result in a potential legal dispute.
Check SuperPages listings for names already in use. Search for corporate names that can be found doing state corporate record searches at the Secretary of State’s office for your state. This office website may also contain listings of active and registered trademarks at the state level.
Finally, before you go through all the work of your trademark search, make sure that your name, slogan or symbol can legally be trademarked. It should be a strong mark. According to the USPTO [PDF], there are generally four types of marks: “fanciful or arbitrary, suggestive, descriptive, or generic.”
The trademarks that are strongest and most easily protected are the ones that are considered fanciful or arbitrary, because of their distinctive qualities. Fanciful marks are made-up words with no generally known dictionary meaning. Arbitrary marks are words with a meaning, but are not readily associated with the goods that are being protected. The more creative the better.
A generic trademark uses the actual name of the good being sold and can seldom be legally protected. Milk cannot be trademarked to sell a dairy-based beverage. Some trademarks become generic because they are used for such a long time by the general public without attributing the name to any particular company or brand. For example, using the word aspirin to mean any type of pain relief medication.
One of the worst things for a business is to have a valuable trademark become generic. Those cold and tasty summertime treats being made by the masses will keep being called “pops” as long as Unilever continues exerting its trademark rights over the beloved and iconic Popsicle®.
Wondering if your trademark name is available? LegalZoom will conduct a comprehensive trademark search for you of not only active and pending applications with the USPTO, but also active and pending state trademarks, corporate names, business listings, common law trademarks, Internet domain names and even international trademarks. LegalZoom also offers trademark registration services that can be completed in three simple steps for a low fee.