How to Create a Brand

Understanding what a brand is. A brand is an intellectual property, such as a word, phrase, symbol, or design, used to identify and distinguish your goods and services from those of others.

• In the United States, a service mark identifies and distinguishes the source of a service provided.
• In the United States, trademark registration covers both the brand name and logo. In Vietnam, the Intellectual Property Law doesn't specifically address brands or logos, but if the brand and logo are part of a trademark or a trademark itself, they will also be protected.

Determine the scope of protection you need, considering geographical limits. Do you only provide goods or services within Vietnam and have no plans to expand to other regions? Then, it's likely that registering your brand only in Vietnam will suffice. On the other hand, if you intend to offer goods or services internationally, consider registering your brand in other countries.

Register your trademark with the relevant government authority. In Vietnam, you can register your brand with the Intellectual Property Office under the Ministry of Science and Technology. In the United States, the federal government provides a central trademark registration through the United States Patent and Trademark Office (USPTO). Although registration with the USPTO is not mandatory, it offers certain advantages.

• It provides legal grounds to prove ownership in intellectual property infringement lawsuits (you must demonstrate ownership if you seek compensation for unauthorized use of your brand).
• It publicly notifies others of your rights.
• In the United States, you can file your trademark with U.S. Customs and Border Protection to prevent the importation of goods that violate your intellectual property rights.
• It allows you to use the ® symbol on your goods or services.
• In the United States, you can bring an infringement case to federal court.
• It enables you to seek protection in other countries.

In the United States, register your trademark in the state where you reside. Your trademark will be protected within that state, and you can file an infringement case in state court. You can also use the ™ symbol for goods and SM for services (although not the federal ® symbol).

Consider using your trademark without registering it. In the United States, if your trademark is strong and has never been used by others, it can be considered a trademark simply because it has been in commercial use for many years. You can use the TM symbol after your word, phrase, or design without registration. However, by not registering with the USPTO, you will forfeit certain rights:

• The right to use the ® symbol for a registered trademark.
• The ability to file lawsuits in federal court.
• The right to list your trademark in the USPTO database, allowing others to find it. Similarly, in Vietnam, your trademark won't be listed in the Intellectual Property Office's Digital Library unless you register it for protection.

Search for existing trademarks to evaluate potential confusion with your mark. In the United States, you should check the PTO's online database to compare your trademark with registered marks or pending applications using the Trademark Electronic Search System (TESS). Simultaneously, look for keywords online and search the trademark database for your state to find results on similar marks, related goods, or services. This ensures your trademark won’t be confused with unregistered marks. If the PTO finds similarities between marks and their goods or services, leading to consumer confusion about their origin, your application may be rejected. In Vietnam, you can also search the Intellectual Property Office’s Digital Library for registered marks.

Identify whether any existing trademarks are similar to yours. In the United States, if two marks are phonetically similar (Apple and Appel), visually resemble each other (a blue-green apple and a blue-green peach), share a common meaning, or even translate similarly from another language (Apple and Táo, the Vietnamese word for apple), or create a similar public impression (Apple and Red Fruits), they are considered similar. The PTO will then assess whether the goods and services under these marks are related.

Evaluate whether a similar mark represents related goods or services. In the United States, if two marks are similar and are used for goods or services so closely related that consumers might believe they share the same origin, the PTO will reject your trademark due to the likelihood of confusion. For example, if you try to register ‘Táo’ for computers and tech devices, the PTO would likely refuse the application due to the existing Apple trademark. However, if you wish to register ‘Táo’ for dish towels, the PTO will not think the public would confuse your mark with Apple’s.

Choose a strong trademark. The stronger the trademark, the easier it is to protect it from unauthorized third-party use. Trademarks fall into various categories from the strongest to the weakest. Choose the strongest one you can.

• Fanciful. A word you create with no meaning, such as ‘Vingra’ for a clothing brand.
• Suggestive. A real word with a specific meaning but not connected to the goods or services the mark represents, such as ‘Apple’ for computers.
• Descriptive. A mark that hints at, but does not directly describe, the nature or relation to the goods or services, like ‘Day-by-Day’ for a calendar.
• Descriptive. A word or design that explicitly describes the goods or services, such as an image of an oatmeal cookie for a cookie company. Descriptive marks typically cannot be registered unless they have acquired distinctiveness through commercial use for at least five years.
• Generic. A mark like ‘Car’ for a car brand cannot be registered and offers no protection against third-party use.

Make sure your trademark meets the necessary registration criteria. In Vietnam, consult the provisions of the Intellectual Property Law (currently Articles 72, 73, 74, and 75 of the 2005 Intellectual Property Law) to determine the conditions for trademark protection under Vietnamese law. In the United States, the PTO may reject your application if your trademark falls into any of the following categories:

• The full name or surname of an individual or similar phrases.
• Offensive or immoral trademarks.
• Clear description of a geographical origin of goods or services.
• Translation of a generic or descriptive foreign term.
• Names of books or movies.

Assess the commercial reasoning behind your trademark. Even if your trademark is eligible for registration and protection, it may lose value if the public struggles to remember, pronounce, or spell it, or if the trademark carries offensive or derogatory meanings in foreign languages (for example, in Spanish, the brand ‘Chevy Nova’ (Chevy being short for Chevrolet, an automotive company) translates to ‘Chevy doesn’t go’).

Hire a trademark attorney. A trademark attorney can assist in selecting a trademark that stands out, conducting precise searches, navigating complex filing procedures, advising on trademark enforcement, and ensuring you don’t miss deadlines for maintaining your trademark’s protection. When hiring an attorney, ensure they have substantial experience working with trademark registration agencies.

File your PTO application online. The simplest way to submit a trademark application is to use the Trademark Electronic Application System (TEAS) on the PTO website. You will need to provide the following documents:

• Personal information of the trademark owner. The owner can be either a business or an individual and does not need to be a U.S. citizen.
• The applicant’s name and address. All official correspondence to and from the PTO will be directed to this person, so ensure they are reliable.
• Trademark description. This is a drawing of your trademark, categorized into two types: “standard character” (which contains only the image, no letters or words) and “special form” (which may include stylized letters, designs, logos, or colors).
• Type of goods or services associated with the trademark. This section identifies the goods or services you offer to customers using your chosen mark.
• Basis for filing. You must confirm that you (1) are using the mark in commerce and it appears on goods (“used in commerce”), or (2) plan to use the mark in the future (“intent to use”).
• Specimen. If your basis is “used in commerce,” you need to submit a photo of the goods or services showing the mark in use (e.g., a T-shirt with the logo printed on the tag).
• Signature.

Pay the application fee. The current application fee for TEAS is $325 per class of goods or services.

• You can opt for the TEAS Plus application at $275, provided you agree to send and receive all correspondence electronically with the PTO, and select goods and services from the pre-approved list.
• All PTO filing fees are non-refundable, even if your application is denied.

Monitor the status of your application. Check your application status every quarter or every four months. Enter the serial number (provided when you filed) on the Trademark Status and Document Retrieval (TSDR) system to check the status of your application.

• The PTO examiner will review your application approximately three months after submission.
• If the PTO examiner sends you an Office Action, your application has issues (such as a likelihood of confusion with an existing trademark, strength of the mark, etc.). You will have six months to respond to the action; otherwise, your application will be abandoned.
• If the examiner approves your application, your trademark will be published publicly in the PTO's weekly online Gazette.

Wait for 30 days. After your trademark is published in the Gazette, the public has 30 days to file an opposition to your registration by submitting a notice of opposition to the United States Trademark Trial and Appeal Board (TTAB). In this case, consult with an attorney before proceeding with further actions.

Receive your trademark registration certificate. The timing of receiving your certificate depends on your filing basis and whether anyone opposes your trademark during the publication period.

• If no one opposes, or if you win in a case where your trademark registration was opposed, you will receive the certificate of registration 11 weeks after the “use in commerce” mark or the registered mark overseas has been made public.
• If no one opposes, or if you win in a case where the “intent to use” registration was opposed, you will receive a Notice of Allowance 8 weeks after the trademark is published. You will then have six months to submit a Statement of Use to the PTO, or request a six-month extension. After PTO accepts your Statement of Use, you will receive your trademark registration certificate.

Maintain your trademark's validity with the PTO. To keep your trademark registered, be mindful of the following deadlines.

• You must file a maintenance document called a Statement of Use (or a Statement of Non-Use with valid reason) with the PTO between the fifth and sixth year after registration, or your trademark will be canceled.
• You must submit a trademark renewal application before the end of the tenth year from registration, or your registration will be canceled.

In the U.S., register your trademark with the state where you reside. If you prefer not to register your trademark nationwide, you can register it within your state. State-level registration allows you to enforce your trademark rights within that specific state. Click on the state name on the following online page to learn about the requirements and procedures for registration in each state.

• Registering your trademark at the state level may be quicker and less costly than registering with the PTO.
• State registration does not allow you to use the federal trademark symbol, ®, on your goods or services.

Register your trademark worldwide. At least 95 countries have adopted the Madrid System for international trademark registration, including Vietnam. The Madrid System enables you to file a single international application in one language with a single fee to protect your trademark in multiple countries of your choice.

• In the U.S., you submit the international application through the PTO, which then forwards it to the World Intellectual Property Organization (WIPO). WIPO reviews your application, records it in the International Register, and sends it to the requested countries for approval (typically within 12 to 18 months). In Vietnam, you must submit the international application to the Intellectual Property Office, provided your trademark is already registered in Vietnam.
• Your registration in each country is valid for ten years, with the option to renew for another ten years.
• Although many countries have adopted the Madrid System, some exceptions exist. For example, as of 2015, Canada was not a member of the Madrid Agreement or the Madrid Protocol. To register a trademark in Canada, you must go through the Canadian trademark office.

• In the U.S., you can also submit your PTO application by mail. You can request the PTO to send you a paper trademark application form, which you can then return once completed. The filing fee for paper submissions is $375. Note that PTO does not accept trademark applications by fax.
• Even unusual and descriptive terms can become generic over time if the trademark owner fails to control its use (e.g., 'Aspirin', which is widely used today to refer to all pain-relieving drugs, regardless of the brand).
• Control the use of your trademark. If at any point your trademark becomes less distinct or is used by others without your permission, third parties can file opposition claims with the TTAB, and you might lose your trademark.
• If you cannot enforce your trademark rights, you risk losing the trademark. When enough people have used your trademark without permission, to the point that you can no longer enforce its exclusive use, it could be canceled.
• Remember, an internet domain name is not a trademark, and registering a domain does not grant trademark rights. Occasionally, using a popular website address (e.g., 'match.com') may fulfill the 'use in commerce' requirement for trademark registration, but domain names do not automatically constitute trademarks.