Trademarks: What Are They, and Why Do You Need Them?

 By: Crystal L. Lawson, Esq., and Jordyn Murphy, J.D. ‘22

As a consumer, you can probably identify “Red Bottoms” as Louboutin shoes, the “golden arches” as the McDonald’s logo, or the “iPhone” as a tech tool created by the company Apple.  This consumer recognition is known as branding, a.k.a. the relationship you build between your business and your customers.

Today, branding is more important than ever in the fast-paced, ever-changing global economy of the 2020’s – now referred to as “the decade of possibility.”  The most valuable brands in the world, Apple, Microsoft, and Amazon, are worth $482 billion, $278 billion, and $275 billion, respectively.  These brand values are not related to annual sales or technology; rather these values are derived solely from the strength of the companies’ customer recognition – their branding – which they protect and exploit with the use of trademarks.

What is a trademark?

A trademark is a type of intellectual property that (1) identifies the source of the goods or services, and (2) differentiates them from the goods and services of others. 

For example, if you walk into a restaurant with the “golden arches” displayed in front, you know that you are not at Wolfgang’s Steakhouse for an expensive, candlelit, steak and lobster dinner.  In recognizing the “golden arches,” you will reasonably expect that you are in an establishment owned or operated by the company McDonald’s, that your meal will be affordable, and that your menu options will consist of mostly hand-held, fast-food that is fried or grilled, such as hamburgers and chicken nuggets. Therefore, the “golden arches” have functioned as a trademark by identifying McDonald’s as the source of the food and restaurant services you are going to enjoy.

Historically, trademarks were markings on products that identified the person or company responsible for the manufacturing of the product.  Merchants marked their canned goods, bread, and swords to assure consumers of the quality of their purchases. The earliest law concerning trademarks was passed in 1266 England, requiring bakers to distinctively mark the bread they sold, and the first comprehensive legal system governing trademarks arrived in 1857 France.

Why should I get a trademark?

Today, trademarks not only serve to assure consumers of the quality of the goods and services that they have purchased, but trademarks give the companies that provide those goods and services various legal rights, that help protect and leverage the time, money, and effort spent in developing their consumer recognition.

Under U.S. law, the owner of a trademark that is registered with the United States Patent and Trademark Office (USPTO) has the exclusive right to use the trademark in commerce, and the right to pursue legal action in federal court against anyone who infringes (violates) this exclusive right by using the trademark without permission.  A trademark-owner can license a trademark to others in exchange for payment, can use a registered trademark to secure a loan, and can register the trademark with the U.S. Customs and Border Protection, who will prevent infringing goods from entering the country.  Simply put, a trademark registered with the USPTO can increase the value of your company, allow you to control when, where, and how your brand is presented to the public, and provide you with multiple avenues of income.

What can I trademark?

You can register trademarks for:

  • Words and phrases (e.g. business name, slogan, catch phrase);
  • Logos and symbols (e.g. Nike’s swoosh, Apple’s bitten apple);
  • Colors (e.g. Tiffany Blue, Barbie Pink);
  • Sounds (e.g. NBC jingle,  Netflix “da-dum”);
  • Smells (e.g. PlayDoh’s musky vanilla scent, Verizon’s flowery musk scent in its retail stores); and
  • Motion (e.g. the opening movement of the Lamborghini wing door, the launching of the Quicken Loans’ Rocket Mortgage rocket).

There are some caveats to securing a successful trademark registration with the USPTO.  First, a trademark cannot be “merely descriptive,” meaning you cannot trademark the name of your coffee shop, “The Coffee Shop.”  However, the name “Starbucks” can be (and is) trademarked for a coffee shop because it is does not merely describe the business.  Second, a trademark cannot be “functional,” meaning you cannot trademark the smell of a deodorant since the function of a deodorant is to make you smell good!  By contrast, the musky vanilla scent of Playdoh can be (and is) trademarked because smell is not a necessary function of modeling clay.  Third, you should not seek to register a trademark that is already registered or that could be “confusingly similar” to a trademark in the USPTO’s database because your application will likely be rejected or flagged for trademark infringement.

How do I get a trademark?

The trademark process can be complicated and time-consuming, taking an average of 12 to 18 months from filing to registration.  At the Law Firm of Lyons & Associates, P.C., our trademark attorneys are available to assist you with navigating the complex world of trademark law.  You may contact Crystal L. Lawson, Esq. by phone at 908-575-9777 or by email at [email protected] to schedule a free consultation.  Our offices are conveniently located in Somerville, Morristown, and Freehold, New Jersey.