Establishing A Franchise Federal Trademark
A federally-registered trademark with the U.S. Patent and Trademark Office is the most optimal way to establish your rights to a name and/or logo. A trademark is the cornerstone of business due to the fact that it serves as the medium through which consumers can quickly identify the goods and services uniquely provided by your business. However, a plethora of companies considering franchising finds that alterations to their logo or name are necessary upon entering the trademark process.
At the core of acquiring a trademark is the identification of the dominant aspect of your mark which establishes a unique commercial impression. This dominant aspect can assume a suggestive, arbitrary, and/or fanciful nature complementing the weaker, descriptive component of the mark.
Selecting A Franchise Name
Fanciful names consist of fictitious or imaginary names such as Xerox, Google, or Kodak; because of their inherent originality. Because of the originality and the fact that it is difficult to confuse these original names with other brands, fanciful business names are dubbed as the strongest form of trademarks.
Arbitrary names are composed of existing words that are commonly known yet have no correlation or relevance to a business’s operations, products, or services. Large businesses with arbitrary names include Apple, Blackberry, and Shell. It is important to note that in spite of the existence of arbitrarily natured business names, generic words cannot legally be trademarked.
As a steadfast rule, however, fanciful and arbitrary names always have the potential to become a trademark, the only hindrance is if some other entity already utilizes or registers a given name. Even in the instance where a given name is being used yet not officially registered as a federal trademark, the most probable legal outcome would be the continued use of that name within their existing market.
Names of a suggestive nature are those which give rise to an implicit association to the existence of or suggestion of the degree of quality of a certain good or service without explicitly revealing said good or service i.e. Netflix or 7-Eleven. Suggestively natured names have the potential to become a trademark, yet the same degree of protection afforded to fanciful and arbitrary marks cannot be guaranteed to suggestive trademarks.
Names of a descriptive nature explicitly denote a good or service or quality of a good or service provided by a business. These often may assume the status of a trademark but only after prolonged use over a significant period of time as well as a mass association from the general public between the name and your business or the product or service offered by your business. Examples include Cold Stone Creamery, Shoprite, or Smoothie King. A descriptive trademark is often assumed by small business owners seeking instant recognition of the product or service offered by their business. However, it is important to note that a name descriptive in nature carries no government protection and other competing businesses have the full ability to utilize an identical descriptive name.
It cannot be stressed enough that generic words cannot attain trademark status; the only caveat to this is if the aforementioned generic words are coupled with words of a fanciful, arbitrary, or suggestive nature and disclaimed which is simply the acknowledgment that a business does not have secured rights over the use of a generic word.
Understanding How Trademarks Work
If one were to picture the nature of trademarks on a broad spectrum, fanciful and generic would be on opposing ends of the spectrum whereas arbitrary and suggestive natures would represent the relative median of the spectrum.
Within these categories of trademark, exist certain subcategories such as geographic locations or surnames (treated as descriptive names) which ought to be avoided.
Establishing Your Franchise’s Trademark
Common law trademark protection is to some degree automatically afforded to businesses who use their name in commercial activity. The U.S. Patent and Trademark Office charged with maintaining the publicly available national trademark registry ensures additional protection upon trademark registration, symbolized by Ò.
The underlying purpose of attaining a trademark is to preemptively disincentivize those who may attempt to profit off of your business through mimicry. Thus, the trademark serves as a form of prophylaxis, if you will. Despite this, it is paramount to understand that if “copycats” were to use an extremely similar name or logo prior to the registration of your trademark, these individuals may have superior rights to your trademark’s likeness and image including but not limited to their use of the trademark and preventing you from utilizing it. In order to counter this, an all-encompassing search is recommended prior to the registration of your trademark as a precautionary measure to ensure your application is accepted and to better grasp the extent of what your trademark covers. We can help you with that search. Even if you ultimately decide not to franchise your business it is advisable to secure a federal trademark for your name and logo. Doing so will make your business more unique, valuable, and secure from imitation. For more information regarding franchise trademarks, check out our blog or schedule a consultation with one of our experienced attorneys.
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