Being able to associate a product or service with a strong trademark supported by ® to designate a federally registered trademark is a strong business tool. Purchasing decisions are continually influenced by trademarks by distinguishing products from one another and indicating a level of authenticity and quality about products and services. The International Trademark Association (INTA) in their Top Ten Reasons Why You Should Care About Trademarks calls a Trademark the Most Efficient Commercial Tool Ever Devised.
Trademarks are any word, term, name, symbol, or device, or any combination thereof that are used in commerce as brand names, domain names, tag lines, slogans, non-
An inherently distinctive trademark is a strong trademark, the more distinctive, the stronger the mark. An inherently distinctive trademark may be registered on the USPTO Trademark Principal Register, qualifies for more protection under more federal, state and common law (even if unregistered) and is stronger for use in business to promote authenticity and for expanding product lines. The stronger the trademark the greater protection received from the courts. Nike, Inc. v. Just Did It Enterprises, 6 F.3d at 1231 (C.A.7 (Ill.), 1993) quoting Squirtco v. Seven-
If a trademark is not inherently distinctive (such as a mark that is merely descriptive or generic), it is hard to protect from competitive use. At best, a merely descriptive trademark may only potentially be registered on either the USPTO Federal Principal Register after 5 years of acquired distinctiveness with the proper evidence or on the Supplemental Register. See Comparison for the advantages of federal registration and the differences between the two registers.
According to the USPTO (see merely descriptive refusals), the two major reasons for not protecting [allowing registration of] merely descriptive marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to avoid the possibility of costly infringement suits brought by the registrant. This thus enables businesses and competitors to have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (C.C.P.A. 1968); Armour & Co. v. Organon Inc., 245 F.2d 495, 114 USPQ 334, 337 (C.C.P.A. 1957); In re Styleclick.com Inc., 58 USPQ2d 1523, 1526-
Types of Registrations (mark categories)
Types of Marks-
In the USPTO TESS database, the type of mark is identified by the field Mark Drawing Code [MD]. The approximate frequency of use for the different types are:
OCCURRENCES CODE DESCRIPTION
38,939 0 UNKNOWN
2,504,964 1 TYPED DRAWING
137,960 2 DESIGN ONLY
724,107 3 DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
285,604 4 STANDARD CHARACTER MARK
295,015 5 WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED
270 6 FOR SITUATIONS FOR WHICH NO DRAWING IS POSSIBLE, SUCH AS SOUND
Usual Types of Trademarks:
Unusual Types of Trademarks:
Creation of a Distinctive Mark
When creating trademarks (brand names, domain names, tag lines, slogans, non-
When creating trademarks, one essential requirement in order to be registrable on the USPTO Trademark Principal Register is that the trademark is distinctive. What is a distinctive name for the purposes of obtaining a trademark from the United States Patent and Trademark Office (USPTO) is found in the Trademark Manual of Examining Procedure (TMEP) in Section 1209.01.
Distinctiveness is the opposite of descriptiveness for trademark purposes. The distinctiveness of trademarks varies along a continuum (often depending on use) from being highly distinctive (or inherently distinctive) to being merely descriptive or generic. Highly distinctive marks that are arbitrary, fanciful or suggestive are registrable on the USPTO Trademark Principal Register. Marks that are merely descriptive matter may potentially be considered to be registered on the Principal Register if they have acquired distinctiveness with Secondary Meaning (must be proven with evidence and at least 5 years of use). Generic marks (common or class names for goods or services) are not registrable as trademarks under either the Principal or Supplemental Register. Composite marks, mark that are partly descriptive or generic and partly suggestive, arbitrary or fanciful, may be registrable on the Principal Register with the descriptive or generic part disclaimed for exclusive use.
The terms are further defined in TMEP 1209.01: “Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, EXXON) or are completely out of common usage (e.g., FLIVVER).”
“Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey).”
“A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.”
“Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.”
“Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. . . .Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. Therefore, a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable.”
Use In Commerce-
How trademarks or service marks are used in commerce by the mark owners makes a difference to obtaining trademark rights, whether the rights come from common law (unregistered) or registration. The origin of the right to use a mark comes from correct prior use, not registration. A trademark identifies and distinguishes a product, a service mark a service, and a trade name a business. These are completely different functions and the use in one does not cross over to the other.
Under the Lanham Act, “use in commerce” for goods is defined as: “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. . . . [A] mark shall be deemed to be in use in commerce . . . on goods when (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce . . .” Planetary Motion v. Techplosion, 261 F.3d 1188 (11th Cir., 2001).
While many use the words ‘trademark’ and ‘service mark’ to be interchangeable, this interchangeability should not be made when applying for a trademark or service mark with the USPTO. If you are applying for a trademark for goods, Section 45 of the Trademark Act requires use "on the goods or their containers or the displays associated therewith or on tags or labels affixed thereto." 15 U.S.C. §1127; see 37 C.F.R. §2.56(b)(1); TMEP §§904.04(b)-
Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, are unacceptable to show trademark [goods] use. Invoices, business cards, announcements, price lists, listings in trade directories, order forms, bills of lading, leaflets, brochures, publicity releases, advertising circulars and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods. See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §§904.04(b)-
Use In Commerce-
“Use in commerce” for common law rights under the Lanham Act is defined as: “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. . . . [A] mark shall be deemed to be in use in commerce . . . on goods when (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce . . .” Planetary Motion v. Techplosion, 261 F.3d 1188 (11th Cir., 2001).
Even if a mark owner does not choose to claim the additional statutory rights that federal registration would bring, the right to protection must be established by the common law claiming plaintiff (person trying to prove infringement) in an infringement case. To establish use for unregistered or common law right protection, a four factor test is used by the courts "to determine whether the market penetration of a trademark in an area is sufficient to warrant protection: (1) the volume of sales of the trademarked product; (2) the growth trends (both positive and negative) in the area; (3) the number of persons actually purchasing the product in relation to the potential number of customers; and (4) the amount of product advertising in the area." Lucent Information Mgmt v. Lucent Technologies, 186 F.3d 311 (3rd Cir., 1999) quoting Natural Footwear Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383, 1398-
Claims for trademark infringement for unregistered marks require findings that the unregistered marks owned by plaintiff are either inherently distinctive [rather than descriptive] or have acquired a secondary meaning and are likely to be confused with defendants' marks by members of the relevant public. Duncan Mcintosh Co. v. Newport Dunes Marina LLC, 324 F.Supp.2d 1083-
In addition, an unregistered mark must actually have been used as a trademark to be protected under trademark law. "[A] plaintiff must show that it has actually used the designation at issue as a trademark"; thus the designation or phrase must be used to "perform[ ] the trademark function of identifying the source of the merchandise to the customers." Microstrategy Incorp. v. Motorola, 245 F.3d at 341 (4th Cir., 2001) quoting Rock & Roll Hall of Fame v. Gentile Prods., 134 F.3d 749, 753 (6th Cir. 1998). See Valid and Invalid Uses of Words, Number, Symbols, etc. as Trademarks examples below or Functions as a Mark for more examples.
In addition, a common law mark has geographically limited rights against a subsequent user under the Tea Rose/Rectanus doctrine -
An inherently distinctive unregistered trademark has common law rights under U.S. & state Intellectual Property Rights (IPR) Law because many of the principles of the right to register for federal registration are the same for qualifying for common law protection. An unregistered mark does not, however, enjoy many of statutory rights of federal registration that do not accrue from common law use. See Comparison of Principal Register v. Supplemental Register.
Federal USPTO Trademark Registration
There are many statutory advantages of Federal Registration for trademarks on the Principal Register above and beyond those provided by common law including:
A few of these advantages apply for marks on the Supplemental Register as well. See Comparison of Principal Register with Supplemental Register for more information.
PLAN FOR A SUCCESSFUL, STRONG TRADEMARK
To verify a potential trademark is strong, is available to use, and is ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these five steps:
4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimen refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)
5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs which can slow down a registration. Incorrect IDs may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)
*We don’t stop here but this is a good start!
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