Creating your own company or product is the definition of the American Dream. Being part of the business and innovation world is exciting, and there are many aspects to consider. Whether you’re an established business or are selling a new product, it’s important to protect your reputation at every turn. This begins with trademarking your company’s logo. Establishing a trademark for your company is a very effective way to ensure that no other businesses or companies try to use a similar logo to capitalize on your reputation or good standing. This is especially important when selling luxury goods. Luxury items are, as they are named, a luxury. As such, many people cannot or will not pay full price. Other businesses often capitalize on this, stealing ideas and products from companies selling luxury goods and offering them at lower prices. This is commonly seen with knockoff purses and bags. To protect your livelihood, you must obtain a luxury goods trademark to preserve your product’s reputation. However, there are many things to note before you begin.
Before you make any moves to trademark, it’s important to be sure that you’re seeking the proper legal document. There are subtle but important distinctions between trademarks, patents, and copyrights. This is a brief summary of each:
All three of these legalities are extremely important for ensuring that you receive fair compensation for your work. However, many companies do not require patents or copyrights if they are selling goods and services. Trademarks, on the other hand, are universally necessary.
Many people are under the mistaken impression that trademarking a word or phrase as a logo or slogan means that the company owns the rights to that word or phrase in all cases. This is incorrect. Trademarks are more specific than the word or phrase itself; a company must distinguish its particular industry and the goods it provides in its trademark documents. So, if someone opened an ice cream shop called “Ice Cold” and trademarked the name, it’s entirely possible that a hockey rink called “Ice Cold” could open perfectly legally. The two industries, products, and services are unrelated.
It is possible to obtain several different types of trademarks. Depending on your situation, there might be one type that is more suitable for your company’s logo than another. The different types include:
Some names or phrases are too generic to lay claim to in a legal sense. In these cases, companies need to get incredibly specific in their documents to obtain the rights to a trademark. For example, you could not trademark a luxury jewelry store as “The Diamond Place.” This is too generic. You would have to include in your trademark that at “The Diamond Place,” the diamonds are made or cut in a specific way to have hope of obtaining a trademark. Even if you did get a trademark, you would only be able to take legal action if another jewelry store called “The Diamond Place” began to make and sell jewelry made the exact same way that yours is. In generic trademarks, it’s often hard to seek legal action because an incredible amount of similarities must be proven.
There are certain aspects of branding and slogans that cannot be trademarked without significant clarification. To expand on the above example, if your luxury jewelry store used the slogan, “diamond rings, watches, and pendants,” this would be considered a descriptive mark. There is no unique identifying information in these words, and therefore a trademark would not be possible at first. You would be able to obtain a descriptive trademark on this sentence when it achieved secondary meaning, which requires that it gain popularity to the point that many people associated the simple, generic sentence specifically with your company. If you are looking to use a surname in your company name, no matter how uncommon or distinctive, your company name will fall under the descriptive trademark category and it will be unable to gain trademark status until secondary meaning or notoriety is achieved.
Arbitrary trademarks are instances in which a word would be too generic for a trademark in one industry, but in another industry, it becomes an arbitrary name rather than a generic description. The most famous example of this is Apple. If an apple farmer tried to trademark his farm under the name “Apple,” he would not be able to, as it is too generic to describe what he does. However, Apple computers successfully trademarked the Apple brand because apples have nothing to do with the electronics that they sell. The arbitrary nature allows it to have a unique logo and brand rather than a generic one.
Suggestive marks involve instances in which the company’s name, logo, or branding gives away information about the product or service without explicitly saying so. These are often far easier to trademark than descriptive trademarks, which can be incredibly generic. In the luxury brand world, Jaguar is an excellent example of a suggestive trademark. It implies that the car is fast, smooth, and quiet, without outright stating any of those things with its name or slogan.
This category is the easiest to obtain legal rights to because it involves the trademarking of a word that is completely made up, and therefore has no competition. It’s easy to search the industry and determine if a company of this name already exists, and it’s unlikely that it does. Famous examples of this would be Pepsi or Clorox. The companies invented these words and therefore had no competition during the trademark process. Be aware; surnames do not fall under this category. Even if your surname is uncommon and is not used for a business within the industry, company names involving surnames fall under the descriptive mark category and cannot be trademarked until they gain secondary meaning.
The rule of thumb for creating a strong trademark is to be unique and specific. The vaguer or more commonplace your name, logo, or branding, the less likely you’ll be able to claim ownership over it. In some cases, such as general or descriptive trademarks, it’s very unlikely that you’ll get a trademark. Perhaps the most famous example of a descriptive trademark becoming legally trademarked is McDonald’s. Because the name of the chain is a surname, it falls under the descriptive trademark category. Generally, it’s hard to get a registered trademark for these. However, McDonald’s is wildly successful, and the name has been closely associated with the brand in the eyes of most everyone. This is to say that if you wish to use a descriptive trademark during the registration process, you will likely have to become similarly successful before there’s hope of your application being accepted. An easier way is to develop a unique name, and perhaps even make up a word yourself, for your business. It’s unlikely that a made-up or uncommon word is already taken, and you will have a more straightforward path to registered trademark status for your luxury goods.
Another critical aspect of the luxury goods trademark process is determining how you want to use your trademark and logo. This is called the basis for filing your application. There are four bases you may choose from when filing:
You’ll also need a registration basis on hand for your application. There are only two options for your registration basis:
The registration basis options are less specific than the basis for filing, as they do not incorporate the timeline of the use of your mark.
It’s essential to understand the different types of trademarks when you begin the process of trademarking your luxury goods. However, perhaps the most vital step is obtaining a lawyer. The trademark process is arduous, and there are many ways in which you may be denied a trademark by the United States Patent and Trademark Office (USPTO). An experienced trademark attorney can help you through all the steps and make sure that your trademark process is successful, and you have an airtight legal contract that gives you the right to your name and logo. The process your attorney will help you through looks like this:
Determining your name and logo is the first phase of obtaining a luxury trademark and will help you prepare to apply. You will be filing your application with the USPTO. If you are at the beginning stages of your company, these different types of trademarks may influence how you choose to name and brand your company. Understanding that distinctive or inventive names are easiest to trademark is the first step in the luxury goods trademarking process. Avoid generic names and descriptions if you can, as you will have a more difficult time standing out, as well as a difficult time obtaining a trademark. If your name or logo is too generic, it will not be able to be registered. If the name or a similar logo is being used, you will also not be able to be registered.
As you prepare to apply, determine the following:
Once you and your attorney have assembled the required information and documents, you may move on to the application phase.
This step is fairly straightforward, and your attorney can walk you through and monitor the process with you. The USPTO uses an online system for filing, and you will upload the required information after you create your account. In some cases, the USPTO will need additional information from you, so you will have to check your application status regularly and consult your attorney about any deadlines or other documents that are required.
During this phase, you must have a trusted attorney on your side. The USPTO will determine whether you have met the minimum requirements for trademark status. If you have, your application will be sent to an examining attorney who will look further into whether your name and logo deserve a trademark. This examination phase is very thorough, and it’s entirely possible that your trademark will be denied here. The chances lessen if your attorney is on hand to work with the examining attorney on the process.
If your application is denied, you and your attorney will receive notice from the examining attorney. Your attorney will be able to help you decide the following steps if your application is denied, as it’s possible that minor changes are enough to get your application to pass. This doesn’t necessarily mean that you will need to start over. You have only six months to respond to the examining attorney’s notice before your application is marked as “abandoned,” and you would need to begin again.
If the examining attorney approves your application, your logo/branding will be sent out in the Official Gazette. This is a publication that allows the public to examine new logos. While it’s rare, examining attorneys do sometimes miss similarities. The public has 30 days from your logo’s publication in the Official Gazette to raise any concerns or objections to your trademark status.
Though this phase has no official name, there is a time between approval and full trademark status in which it’s easy to miss deadlines and throw away all your products by mistake. If no objections were raised to the Official Gazette’s print of your logo/name/brand, you would receive a notice saying that you have six months to use your trademark in commerce. If you do this, a statement of use must be filed so that the USPTO can see that you’ve used the trademarked logo/name for its intended purpose. If your business is not up and running within this time, your attorney can help you file for an extension.
The examining attorney will review your statement of use and determine if you’ve used your trademark in the proper way or if further changes must be made. If all necessary standards are met, and the examining attorney approves of your design, it will be submitted for registration.
Just because your luxury goods trademark was approved and submitted does not mean your work is finished. After your statement of use is authorized and has been submitted for registration, the USPTO will require several more documents within a specific time. It is imperative that you meet these deadlines. Failure to do so means you will have to start your process from the very beginning, and in the several months it’s taken you to reach the finish line, it’s entirely possible that the trademark situation has changed. You will no longer be approved with the same application information. Your attorney will help you assemble the required documents and submit them on time. They will also be able to help you keep track of your trademark status. Even after your trademark is fully approved and in use, you must check the status every year to maintain it and keep your trademark from expiring.
Clearly, this process is long and arduous. There are several weeks or months of waiting time for each of these steps while your application is processed. Doing it alone is possible but extremely difficult. Most people who try to do it themselves end up missing deadlines, abandoning applications, losing fees, and never obtaining their trademark.
The terms “registered trademark” and “owning a trademark” are often used interchangeably, but they are incredibly different, especially in a legal sense. Technically, you do not need to do anything special to own a trademark. If you begin an Etsy store and sell homemade soaps, you will likely develop and use a name and logo for your shop. This is perfectly fine to do, and there is no legal process required for you to continue your soap-making business. However, if you wish to supply your soap in a national chain of health stores, you may want to consider registering your trademark through the process above. Having a large market means more opportunity for others to steal your designs and ideas, and until you trademark your brand, there is nothing legally stopping them from doing so. If you fully register your trademark with the USPTO, you have the right to litigation if someone tries to duplicate your business.
When developing a luxury brand, it’s important to present yourself well. Part of a good presentation is including the proper symbols on your products to display your company in an accurate light. If you own a trademark, as you use a brand and logo without having it legally registered, you may use the ™ symbol. When your registration with the USPTO is fully complete, you will be able to use the Ⓡ mark with your products. Many customers of luxury brands know what to look for in branding. It’s worth considering that having the registered symbol on your products could attract customers, and the process may be worth it simply for the extra legitimacy it brings to your luxury goods brand.
One aspect of the trademark process that many find surprising is the responsibility of the business owner to enforce the trademark. Though they are the official registration office, they do not keep track of or enforce punishment for trademark violations. It is the job of you and your team of attorneys to press charges against trademark violations and ensure that your contract with the USPTO is honored by other businesses. This is another reason it is critical to have a trusted attorney with you through the trademarking process. Your attorney will help you keep track of any violations that may occur and will know how to seek legal action against those who create an infringement on your trademark.
As we’ve determined, the trademarking process is incredibly complicated. There are endless deadlines, submissions, and mountains of paperwork to keep track of, and it’s nearly impossible without an attorney on your side. At Four Reasons Legal, our passion is protecting the American Dream. We know how hard individuals work to build their brands and their businesses and how heartbreaking it can be when someone else tries to use it. Our firm specializes in protecting your hard work and ensuring that you are protected from trademark infringement at the federal level. No other law firm knows more about luxury goods trademarks than we do, and we will not rest until your trademark is created, obtained, and protected. Call Four Reasons Legal or visit our website today to begin your journey to trademark status.