How to Choose a Strong Trademark in the Toy Industry

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By Josh Gerben

JG HEADSHOT-newFounder of U.S. based Gerben Law Firm, PLLC, Josh Gerben is a trademark attorney whose full-service intellectual property law firm has secured over 4,000 trademarks for clients since 2008. The firm provides patent, copyright and trademark services for businesses internationally. Josh Gerben has been featured in a variety of national news outlets including FOX News, NPR, Huffington Post, and The Wall Street Journal.

            To build a successful business, you must develop a strong brand.  Choosing a strong trademark is the first step in growing your business and creating customer recognition and loyalty.  However, not all trademarks are created equal, and a weak mark may not provide the protections that you need.  Consider the following tips to choose a strong trademark in the toy industry. 

What Constitutes a Strong Mark?

            Your trademark may be the first interaction a person has with your toy brand.  For this reason, it is important to choose and register a strong mark, which should also protect against infringement.  Take the time to understand what constitutes a strong mark, and what may not be approved by the United States Patent and Trademark Office, or USPTO.  Trademarks can be divided into four categories, based upon their level of distinctiveness:

  • Generic words depict a general product or service. An example of this would be “Blocks” for a brand of toy building blocks.  These generic words cannot function as trademarks and will not be approved by the USPTO.
  • Descriptive trademarks describe a product or service. “Ridiculously Enormous Teddy Bears,” for example, would be a descriptive mark.  Because the terms used are not unique in any way, descriptive trademarks receive very little protection. 
  • Suggestive trademarks only hint at the product or service being offered. Hot Wheels is an example of a suggestive mark in the toy industry.  While suggestive marks may offer more protection, trademark disputes are possible, as others may choose similar, non-distinct language, like Cool Wheels, for their toy brand.
  • Arbitrary trademarks consist of commonly used words that aren’t related to the good or service provided. An example of an arbitrary mark in the toy industry is Razor, which sells scooters, not shaving materials.  Arbitrary marks offer much stronger protection from infringement, but they often come with the downside of needing to educate consumers about the goods or services actually offered by the brand.
  • Fanciful trademarks offer the strongest protection against infringement. They are invented terms with no relation to the product or service provided.  Crayola and Nerf are both well-known fanciful trademarks within the toy industry.

            Both fanciful and arbitrary trademarks offer the strongest level of protection for your toy brand.  However, more marketing and advertising is often needed to create customer recognition.  While suggestive marks may provide more information to consumers, they may also leave you vulnerable to infringement.  These are important factors in determining the best trademark for your toy brand.

Selecting a Strong Mark

            Once you understand the levels of trademark distinctiveness, you are ready to begin the process of selecting a strong mark.  You likely already have some ideas in mind for the perfect trademark for your toy brand.  It may be wise, at this stage of development, to seek the opinions and criticisms from some outside sources.  Begin with your target audience, which for many toy brands is children.  Are they able to easily pronounce your trademark?  Is it memorable enough to create brand recognition?  These are important questions to consider as you market your toy brand to children. 

            In today’s global economy, you may quickly find yourself doing business in other countries.  If you plan to register your trademark internationally, either now or in the future, you may want to consider how your mark will translate to other languages and cultures.  In addition, many business owners plan to create a strong online presence, as well, using their trademark in their domain name.  If this is something you plan to do, it is a good idea to see if your desired domain name is available before you make a final decision on your trademark. 

Register Your Mark

            In order to gain all the legal protections that come with a trademark, you must register your mark with the USPTO.  While some common law protections are available simply by using the mark in commerce, they are extremely limited.  For instance, without a federal registration, your mark would only be protected in the small geographic region where your business is located.  Waiting to file your trademark may hinder your ability to expand to other areas where a similar mark is already in use. 

            Once you’ve decided on a strong mark, complete a comprehensive trademark search to determine whether a similar mark has already been registered.  After a search has been completed, register with the USPTO as soon as possible.  This is because the date you register becomes your priority date.  Anyone filing a confusingly similar mark after this date will likely have their application rejected.  The exclusive use of your trademark, through the rights granted to you be the USPTO, will ensure your mark remains strong. 

Maintaining a Strong Mark

            While the USPTO registers trademarks, it is the job of the owner to maintain it.  One important way to maintain your mark is to use it consistently, but not as a noun or verb, which could lead to its becoming generic.  Frisbee, yo-yo, and pogo stick were all once trademarked products whose names were so diluted, they no longer had trademarked protections.  Now any flying disc, no matter the brand, it considered a frisbee, and yo-yo’s are no longer associated with any brand.

            In addition to consistent use, be sure to begin using the ® symbol once your trademark has been registered with the USPTO.  Use the symbol anywhere your trademark is seen, from product packaging to your website.  This public notice of registration serves multiple purposes.  Not only will it validate your brand, but it will also deter others from unknowingly infringing on the mark.   Keep in mind that the responsibility to monitor the use of the mark and police possible infringement is yours.  The USPTO will not notify you of potential infringement. 

            If you choose a strong mark and actively maintain it, you will have a valuable asset that may never expire, as long as you renew with the USPTO.  Your first renewal will take place between the fifth and sixth year of use, and the second between the ninth and tenth year.  After that, renewals will take place every ten years.  The USPTO will not send reminders as your trademark renewal date approaches, so you will need to keep track of these dates yourself.  Failure to do so could lead to cancellation of your mark. 

            Simply registering your trademark with the USPTO will provide your toy brand legal protections, but, depending on the strength of your mark, those protections could be limited.  Just like you’ve invested time and effort into developing your toy brand, you should also invest time into creating your trademark.  Begin by avoiding generic or descriptive marks, opting instead for the stronger arbitrary or fanciful marks.  Seek the opinions of people in your target market, and consider researching how your mark may be translated in countries where you currently do business, or plan to in the future.  Finally, maintain your mark through consistent use.  Know your legal rights and take action against potential infringement, and meet your renewal deadlines as well.  All of these things will help you to develop a strong trademark and grow a strong brand. 

—– Article written by Josh Gerben, Gerben Law Firm, PLLC

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