A trademark is a type of intellectual property right over a phrase, a symbol, a slogan, or a combination of the above that identifies a product or service related to a specific business. In other words, trademarks house the goodwill of your business and makes it easy for consumers to identify the goods and services related to your business. Here are five things that you may or may not have known about trademarks.
Unlike patents, which must proceed with secrecy, a trademark can be filed even after it has been publicly used. Under intellectual property rights, a business can file for a trademark as either intent-to-use or use-in-commerce. Meaning, you can decide to file a mark as soon as you thought of it or you can start using it with your business and file later. However, as an attorney who help entrepreneurs and startups, I caution businesses who want to wait to file, because if another business file with United States Patents and Trademark Office (USPTO) before you do, it can potentially hinder you from getting that mark.
Little known fact, a trademark can be not just a symbol or a phrase or a slogan, but it can be a specific sound combination. It wasn’t always the case, but yes, you can file for a mark with a unique mp3. For instance, NBC has registered the “chimes” while MGM has registered the “roaring lion.” Here are the links to listen to the NBC chimes and roaring lion:
Like sounds, this is something that is not as well known, but yes, you may be able to get a trademark for an odor. However, it is more tricky than you may think because Trademark Manual of Examining Procedure (TMEP) states that “[t]he scent of a product may be registrable if it is used in a nonfunctional manner. See In re Clarke, 17 USPQ2d 1238, 1239-40 (TTAB 1990) (holding that the scent of plumeria blossoms functioned as a mark for ‘sewing thread and embroidery yarn’). Scents that serve a utilitarian purpose, such as the scent of perfume or an air freshener, are functional and not registrable.”
You might be wondering if a sound or a scent can be registered, how about a flavor? Well, it is a yes and a no, because while you cannot trademark a flavor, you can potentially trademark a name of a flavor that is distinctive. For example, if you use the flavor as a product’s name or part of your slogan that is distinctive, it can potentially obtain a registration, however, TMEP states that “a flavor can never be inherently distinctive because it is generally seen as a characteristic of the goods. In re Pohl-Boskamp GmbH & Co., 106 USPQ2d at 1048 (finding that peppermint flavor mark for ‘pharmaceutical formulations of nitroglycerin’ failed to function as a mark).” However, keep in mind if you create a unique flavor, composition might be patentable, recipe to create the flavor itself can be copywritten, or kept as a trade secret if it meets the criteria for such intellectual property rights. In other words, keep in mind that intellectual property rights come in various forms and trademark is not necessarily your only (or even best) option. Always, consult with an intellectual property attorney because as previously mentioned, some intellectual property rights require secrecy to perfect the right.
As mentioned before a trademark is a type of intellectual property right. Ideally, you would want to register the mark with the federal register, which is what is issued when you get it through USPTO and you have rights across all 50 states and US territories. Further, the registration with the federal register allows the use of the symbol ® while you cannot use it if you have state registration. For some reason, if you cannot get the mark on the principal register (e.g., due to a conflicting mark) or the federal supplemental register (a secondary list maintained at USPTO, for marks that do not qualify for principal register but may still qualify for this), then you can potentially apply for a mark in your local state. Also, if you are a local business and does not plan to expand to other states, you might be tempted to take the cheaper route of getting a state registered mark, however, if you plan to or there is a chance you may expand or move, this is not recommended.
About the Author: Gayani R. Weerasinghe is a transactional attorney practicing intellectual property and business/corporate law, including working with entrepreneurs and start-ups on their patents, trademarks, copyrights, protection of trade secrets, and compliance training of employees. Before coming to law, she spent 13 years doing biomedical research, including co-authoring a dozen publications of original research in peer-reviewed scientific journals. She is also a business coach, assisting businesses and professionals in navigating their goals and objectives and setting new ones. For more information, please visit her LinkedIn profile at, https://www.linkedin.com/in/gayani-r-weerasinghe-esq-222bab7 or visit her Youtube Channel “Inventive Mind.”