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Stacy Stitham
Updated: May 14, 2021
How To
How to know when to trademark — and when not to
By Stacy Stitham
There is no shortage of advice available from trademark attorneys urging you to register your latest and greatest logo, product name or brand. Although there are often good reasons to consider applying for a trademark registration or otherwise protecting your brand, sometimes there are equally good reasons not to register.
Source-identifying
First, trademarks are designed to be source-identifying. When you go to the grocery store and walk down the cereal aisle, you want to make sure you can readily distinguish your children’s Cap’n Crunch from your Chex. Trademarks serve that purpose, ensuring that you can identify one brand over another. But if your selected mark is overly descriptive — say you intend to sell oversized wheelbarrows, painted green, under the moniker Big Green Wheelbarrows — not only are you doing nothing to distinguish your brand, but the Trademark Office is unlikely to find your mark worthy of protection.
You are not allowed a monopoly on terms that merely describe your product. In this instance, if it is early enough in your launch process, you may want to consider re–grouping and selecting an arbitrary or fanciful name instead. In other words, a term that has nothing to do with the product you’re selling (think Apple for computers), or one that is made-up (think Starbucks for coffee).
Extent of use
Let’s say you’ve selected a strong, distinctive name. Now you’ll need to determine whether or not you are actually getting — or at least expecting to get — your money’s worth from that name. This leads to our second consideration: to what extent is the name in use or intended to be in use? Are you putting the name only on a short–lived product that you don’t plan to sell long-term? Perhaps it is a one–time seasonal offering, and sales to date have been lackluster. If so, going through the time, trouble, and expense of a trademark registration may not be worthwhile.
State vs. federal
But let’s say you have a solid name on a solid service or product offering. That still leads to the question of the scope of your usage, and our third consideration. If you are a brick–and–mortar business that doesn’t plan to expand beyond your existing Maine-based footprint, you may want to consider a state trademark registration, rather than a federal one. The process for obtaining a state mark is far more streamlined and inexpensive. While a federal registration is needed to provide you with an affirmative sword to wield against out-of-state users of similar marks, a Maine state registration will provide you with evidence of pre-existing usage that will act as a defensive shield against any later users.
If you are marketing goods in Maine under the term Grunx, and later discover a business in Missouri marketing similar items under the term Granx — you may not be able to shut them down without a federal registration. But at the same time the owner of Granx should not be able to complain about your usage, if it predated their own, as long as you do not expand your sales beyond Maine.
While it is important to weigh the decision carefully, it is worth nothing that there are still a great many reasons to trademark your brand.
Start by selecting a unique, distinctive mark, and then consider your business plans carefully, with the goal of protecting your footprint (both existing and future). Regardless of whether you elect to seek a trademark registration, you should always have your trademark lawyer perform a search prior to adopting any product name or trademark.
Stacy Stitham, an attorney at Brann & Isaacson, litigates patent, trademark, trade dress, copyright and corporate cases in courts from Maine to California, before the Trademark Trial & Appeal Board, and in the International Trade Commission. She can be reached at sstitham@brannlaw.com or (207) 786-3566.
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