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Most of our clients—our technology clients included—need trademark protection. Your trademark is part of your brand identity, and you invest significant resources into making it meaningful to your consumers. You should similarly invest resources into ensuring protected ownership of your trademark otherwise you run the risk of someone claiming superior rights to your mark.

A key consideration in developing a trademark strategy is securing and protecting your marks in the appropriate markets. In the United States, unlike many other jurisdictions in the world, trademark rights are based on common law rights, i.e., first-to-use, instead of statutory rights, i.e., first-to-file.


While complex, U.S. trademark protectability ultimately boils down to two primary points:

  1. Trademark Recognizability
  2. Trademark Usage

Trademark Recognizability: It's important to know that Trademarks must be distinctive, meaning that consumers have to understand that the trademark indicates the source or affiliation of a product or service. Trademark law treats marks differently depending on how distinctive they are. A mark's recognizability is judged along a continuum from fanciful and arbitrary, which garner the strongest protection, to generic names, which are not protectable at all.

Trademark Usage: The second important component of Trademark protectability involves usage. In the U.S., the first person to use a trademark in commerce is considered the senior user of a mark. This use is required before you can register a trademark in the U.S.


A trademark is considered in commercial usage when the mark is used in the sale or transport of products between more than one state or U.S. territory, or between the U.S. and another country. For products, the trademark must appear on:

  • The product's tags or labels,
  • On the container for the products, or
  • On displays associated with the products.

For services, the trademark must be used in the sale or advertising of the services. Even if you haven't started using your trademark in commerce, you can still apply to register your trademark in the U.S. on an intent-to-use basis.​


We offer our clients trademark protection strategies on a variety of trademark types. The approach to each company's strategy is tailored to their market and their unique purpose. There are five types of trademarks:

  1. Fanciful Trademarks (e.g., Kodak, Exxon, Polaroid): A fanciful mark is a made-up word, a word that didn't exist until someone coined it and used it as their trademark. Essentially it is an invented word, specifically invented for its use as a trademark. Because they are so distinctive, they receive the most protection from their inception.
  2. Arbitrary Trademarks (e.g., Apple, Dove, Shell): An arbitrary mark is a real English word with a real common meaning that is unrelated to the product or service. Like fanciful marks, arbitrary marks are those trademarks or service marks that consist of a word or symbol that has nothing to do with the products or services being offered. The key difference is that an arbitrary mark is a real word, but the used in a way that is unconnected to its everyday meaning.
  3. Suggestive Trademarks (e.g., Jaguar, Microsoft, Netflix): So named for their characteristic of the product or service. These marks suggest something like a quality, characteristic, or purpose of the product or service. Suggestive marks require consumers to use their imaginations to identify the characteristic of the products or services. Suggestive marks are considered inherently distinctive, but just barely.
  4. Descriptive Trademarks (e.g., Sharp, British Airways, Best Buy): These marks describe a quality, characteristic, or purpose of the product or service. Descriptive marks are not inherently distinctive; they have to acquire their source-identifying properties through use over time.
  5. Generic Trademarks (e.g., Band-Aid, Aspirin, Thermos): Generic marks aren't really marks at all, but just the generic word for the product or service. Generic marks are unprotectable because they cannot serve a source-identifying function.

When our clients are developing their trademarks, we advise them to focus on the first few types of marks: fanciful, arbitrary, and suggestive. In the tech start-up world, these trademarks offer high recognizability, which translates to protectability. Think of the iconic, once-bitten apple that's attached to Macintosh.  

It's also important to remember that if you have a descriptive trademark, you cannot register it on the Principal Register in the U.S. until it has acquired distinctiveness, usually after a minimum of five years of substantially exclusive use.

Developing a trademark protection strategy necessarily involves working towards short-term and long-term goals. The team at A.H. has helped a diverse range of start-up and corporate clients develop trademark protection strategies at every stage in their business.


There are several beneficial reasons to register your trademark.

  • It provides notice to others that you are claiming the rights to a trademark.
  • It serves as prima facie evidence that your mark is valid and distinctive and that you have the exclusive right to use the mark for registered products and services.
  • It provides a basis for trademark examiners at the U.S. Patent and Trademark Office in their determinations concerning other applications that may be similar to your mark.

Trademark rights are limited to the jurisdiction in which they are protected. Registering your trademark in the U.S. doesn't mean your mark is protected in other countries. And, unlike in the U.S., most countries grant trademark rights to the first person to register a mark, not to the first person who uses it. U.S. businesses that want to protect their trademarks internationally also need to file internationally. Registered trademarks are limited to the products and/or services that are included in the registration. In either case, we can help you prepare and file your U.S. and international trademark applications.

Protecting the trademarks for the products and services at the core of your business should be the first priority. As you expand, you can apply to extend your existing trademarks to new products and services. You can also register new trademarks for your existing products and services.​

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AH General Counsel Services is committed to answering your questions about Corporate Transactions, Commercial Transactions, Technology Transactions, Intellectual Property, Start Ups & Emerging Growth and Labor & Employment law issues in California.

We'll gladly discuss your case with you at your convenience. Contact us today to schedule an appointment.