The United States Patent and Trademark Office (USPTO) often receives close to 100,000 trademark applications within a single calendar month. Many of these applications are denied because they involve names or logos that do not meet the agency’s requirements for trademark registration. Before filing their own trademark applications, Registered Investment Advisors (RIAs) should consider executing a trademark search. A trademark search can save new RIAs valuable time and money by helping to determine whether the RIA names or logos are trademarkable. Conducting regulatory and existing trademark registration in advance can also form an important part of compliance protocols, helping RIAs to prepare applications for trademark registration that comply with regulatory expectations regarding their service descriptions. Many potential RIA names may not be suitable for registration with the USPTO, for any of several reasons. To gain a better understanding of when, whether, and how to submit RIA names for trademark registration, RIAs may wish to discuss their options with a qualified RIA registration law firm. Altitude Securities Law Offices advises investment advisors throughout the United States. Call (405) 534-4914 to schedule a consultation.

The Basics of a Trademark Search

All companies should carry out trademark searches before settling on names and logos. This step can provide several advantages in any line of business, and new RIAs are no exception. The most obvious purpose of a trademark search is to determine whether the name or logo has already been claimed by another company, as trademarks that are closely similar to ones already registered with the USPTO will be rejected due to likelihood of confusion. Conducting thorough research before submitting a trademark application, and even before establishing a business name or logo in professional use, can therefore help to save the time, money, and inconvenience of submitting an application that is sure to be rejected. 

Additional reasons for performing a search of the USPTO database include brand awareness and anticipation of the associations customers may draw with particular names or images. Some names, even when not actually “taken,” may already be associated with existing companies, brands, industries, and other concepts. These associations may be beneficial or problematic, depending on the circumstances. For example, most RIAs would wish to avoid being associated, even through an accident of rhyme or alliteration, with a company currently under investigation for financial crimes. A different name may be more appropriate to avoid associating the new RIA with these negative concepts.  

Understanding Existing Trademark Research 

Trademark searches are relatively simple, and the USPTO makes its database accessible to anyone who wishes to enter a query. However, some search techniques are more advanced than others. An RIA attorney may be able to assist new RIAs in obtaining the most accurate search results possible. With help from the Altitude Securities Law Office, new RIAs can choose appropriate names and logos to maximize their chances of an easy trademark approval process. 

Likelihood of Confusion

Trademark searches help an RIA ensure that the chosen name is not already in use by another company. While it is acceptable to have the same name as another company, it is not acceptable to adopt a name already trademarked by a company within the same industry or field. The USPTO does not allow this because it leads to a “likelihood of confusion” for the average consumer. 

The USPTO highlights two name examples to illustrate this point: Dove and Delta. Two companies share the name Dove in the United States, but the USPTO allows this because one sells ice cream and the other sells soap. The same logic applies to Delta Faucets and Delta Airlines. 

Coordinated Classes

The USPTO recommends using coordinated classes in federal trademark searches. Applying this strategy helps new RIAs target trademarks related to services that are a close match for their own. The search query “finance,” which has obvious applicability to new investment advisors, will return 88 different possibilities covering both international and United States classes. International Class 036 covers insurance and financial services. New RIAs can narrow down their searches using coordinated classes in order to more quickly determine whether another company in the same specific field, or “class,” of business operations has already registered a trademark similar to the one under consideration. 

The Role of the Lanham Act

New RIAs should consider the Lanham Act when executing trademark searches and choosing company names. The Lanham Act states that in order for a mark to earn trademark protection, a company must employ it “in actual use” during commerce. In addition, the mark “in actual use” must be distinctive. 

The Lanham act recognizes four categories of distinctiveness. These are:

  • Arbitrary/fanciful
  • Suggestive
  • Descriptive
  • Generic

Fanciful Trademarks

Although the term “fanciful” might seem negative, it represents the strongest type of trademark. These words are completely new inventions that have never appeared in dictionaries. Though it has long since become a household name through brand dominance, Google is an example of a trademark that was “fanciful” at the time it was first submitted for trademark registration. 

Arbitrary Trademarks

Arbitrary trademarks are not quite as strong as their fanciful counterparts, but they still offer excellent degrees of protection. These trademarks may be existing words, but they have no topical association with the goods and services related to the application. Rome Snowboards is an example of an arbitrary trademark. 

Suggestive Trademarks

Suggestive trademarks are related to the goods and services of the application. A thought process is necessary to realize this connection, however. Microsoft is an example of a suggestive trademark, as it is a shortened version of the term “micro-computer software.” 

Descriptive Trademarks

Descriptive trademarks offer weak levels of protection, and can be difficult to get approved for trademark registration. As their name suggests, descriptive trademarks describe clear characteristics of the goods or services associated with the application. American Airlines is a clear example of a descriptive trademark. The company is American, and it is an airline. No thought process is necessary to determine the nature of the service offered by this company. 

Generic Trademarks

Generic trademarks offer zero protection, and these names are not trademarkable at all. Generic words cannot be trademarked (i.e., registered), and an RIA will have its application denied if it submits a generic mark for registration. An obvious example of a generic term in the field of Registered Investment Advisors is “RIA.” A company cannot trademark the name “RIA” since this is far too generic a term. Companies can expect to encounter similar issues when attempting to trademark company names like “Investment Company” or “Good Investments.” 

Understanding and Avoiding RIA Trademark Genericide

Fanciful or arbitrary trademarks may eventually become generic over time in a process called “genericide.” Examples include “escalator,” “cellophane,” and “zipper.” Once genericide occurs, it is difficult or impossible to reverse, which is why many brands are so aggressive in protecting the use of their trademarks as valuable intellectual property. 

Add a Clear Description of Financial Services To Remain Compliant

The USPTO states that each trademark application must include a list of services the company wishes to use with the chosen trademark. This is an important step for RIAs, as there are very specific restrictions on the services an RIA can provide to their clients. Perhaps most notably, RIAs cannot carry out trades without the consent and knowledge of their clients. When applying for a trademark, RIAs should avoid including references to or descriptions of these prohibited services. 

Reach Out to an RIA Registration Lawyer

Trademark searches represent only one aspect of the RIA registration process. There are many other steps to consider, and approaching this process alongside a qualified attorney can be advantageous. When working alongside the Altitude Securities Law Office, RIAs may be able to streamline their trademark registration process and receive targeted guidance for their specific needs. Call (405) 534-4914 today to discuss trademarkable RIA names, the impact of regulatory compliance on RIA trademark registrations, and more.