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Trademark Articles

 

How to Choose a Strong Trademark

Basically, a trademark is a device, such as a word, image, logo, sound, shape, even smell or color, which carry one main function - successfully identify your goods or services on the market and make them stand out from the crowd of your competitors. The ability to stand out in the customer’s mind depends on numerous factors including how your trademark sounds, looks, what it means, etc., but it all comes down to how strong your trademark is. The stronger your original mark is, the more likely that you will be able to stop use of the subsequent confusingly similar marks.

Your trademark can be strong for a number of reasons, including:

Coined terms. These are words you won’t find in any dictionary because they are words that are made up and carry no meaning (e.g, “EXXON”, “KODAK”, or “TYLENOL”). Chances are that a coined trademark will automatically entitled to the strongest trademark protection.

Arbitrary terms. They are words that have a meaning un-related to the goods/services provided (e.g, “APPLE” for computers, “CATTARPILAR” for industrial equipment or “CAMEL” for cigarettes).

Suggestive terms. These terms suggest (rather than describe) characteristics of the products/services (e.g., “GOLDEN GLOW” for suntan oil). Suggestive terms tend to be the most popular among marketing folks as they carry some information about the products or service. On the other hand, suggestive terms are likely to be used by your competitors in their trademarks or to inform about the products or services, which weakens your trademark and makes it less distinctive.

Clever and unique logos, arrangement or stylization of words. Next to a word term, logos are the most popular way to identify your products or services. Just think of a blue oval of Ford, golden arches of McDonalds or three stripes of Adidas, which all demonstrate that a graphic element can be a powerful trademark.

Finally, your originally weak trademark can become strong over time through continuous long use. In that case, customers have come to associate your trademark with your goods or services. At some point, “GENERAL ELECTRIC”, “BURGER KING” or “WHOLE FOODS” were weak trademarks, but became very well-known through long use.

Always remember to consider the whole effect of your mark. After all, your customers are real people, who will always appreciate a clever, catchy and unique brand name. Contact us now for your FREE consultation with a Trademark Attorney.

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Benefits of a federal trademark registration

In the U.S. your trademark rights are created through use of the mark. What it means is the moment you start using your mark (hopefully you chose a strong trademark), you acquire so-called “common law” rights. Good news is – you are a trademark owner! After I explain it to my clients, many of them ask me “So why should I bother to register a trademark if I already have rights under the common law?” Good question! Simply, your rights are limited to the geographical location (your city, state, etc.) in which you currently use your mark. Your common law mark is not protected outside that area. Chances are, sooner or later someone else may start using the same or similar trademark and you would have to sue the “bad guys” to stop their trademark use, which is a lot easier if you have a trademark registration. Or, even worse, someone would register the same or similar mark and you will be “locked” within the territory of your current trademark use. If after that you decide to expend your business to a new region, you will likely be infringing someone else’s trademark rights.

Therefore, federal trademark registration provides very important benefits, such as:

  • You will receive exclusive nationwide ownership of the mark. The U.S. Patent and Trademark Office will refuse registration to any trademarks it finds confusingly similar to your trademark.
  • Your trademark will appear in trademark search reports ordered by others, likely discouraging others from proceeding with the registration of the same;
  • The filing date of the application is a date of first use of the mark in commerce (this gives you nationwide priority as of that date, except as to parties who used or applied for a trademark before you did);
  • Reduced grounds for attacking your registration once it is five years old by another parties who try to register or use the same or similar trademark;
  • The right to sue in federal court for trademark infringement;
  • Recovery of profits, damages and costs in a federal court action and the possibility of triple damages and recovering your own attorney fees;
  • The right to request the U.S. Customs to stop the importation of goods bearing your infringing mark;
  • Availability of criminal penalties and triple damages in an action for counterfeiting your registered trademark;
  • Your U.S. Registration can be used as a basis for obtaining registration(s) in foreign countries;
  • Your registration increases the likelihood of stopping use of an same or similar Internet domain name;
  • You can use the Trademark Registration ® Symbol.

In light of this, you should seriously consider obtaining a federal trademark registration. Trademark system is self-policing, which means that if you don’t step up to protect your trademark, no one else will. Registering your trademark is the first and very important step to secure your trademarks rights.  Contact us now for your FREE consultation with a Trademark Attorney.

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Can I use generic words in my trademark?

Generic terms are common words, which can be found in the dictionary, that identify or simply name products or services. Many of my clients ask me if they can use common words, which tend to be genetic for their trademarks. Do not rush into saying “no”. The correct answer wound be “it depends….”. Let’s see what it means.

The main idea behind a trademark is to be unique enough to identify and distinguish your goods or services from your competitors’. If you use a word “APPLE” as a trademark to sell apples or “PET SHOP” for a pet store, it will never become a trademark because these terms are generic, as they simply name the goods you sell or services you provide. It makes perfect sense to keep the generic words in public domain so everyone can use them to identify their products or services. On the other hand, as long as the trademark contains a non-generic part, in addition to generic term, the whole mark can be registered (e.g. “GLORY APPLE” for apples or “VICTORY PET SHOP” for a pet store). In this case a trademark protection will only be given to a non-generic part only. Finally, if you use a generic word to trademark non-related goods or services it becomes non-generic and can be a very strong trademark (e.g. if you use a word “APPLE” to trademark computers or “PET SHOP” for education services).

As we see, usually non-protected, generic terms can be used in the trademarks on some occasions. Contact us now for your FREE consultation with a Trademark Attorney.

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How many trademarks do you need to file?

If you are reading this article then you decided to file a at least one trademark application. However, your one trademark can in fact be two or more separate marks. For example, if you use stylized font for your trademark or any distinctive graphic elements. In all these cases wording can be considered as one trademark, its stylization as another, additional design as the third one and its color form as the forth trademark. As an example, think of a blue oval with stylized FORD in it – this famous trademark in this form can be viewed as four different trademarks:

 

  1. Word FORD
  2. Stylized word FORD
  3. Stylized word FORD in Oval
  4. Stylized word FORD in Oval in blue color

Situation when you technically have more than one trademark does not mean you have to file all of its variations. In fact, it can get rather expensive (governmental fee is $325 per class within one trademark application). Therefore, if you are on a budget, you have to develop a strategy to exercise maximum protection for your brand from the least number of the trademark registration. 

If you have a trademark, which combines a word with a distinctive design, and the money is not the issue, it is a good idea to register three (or four if the color plays a significant role in your trademark) separate trademarks as in the example above. If your funds are short, it is usually better to file for a word/design combination. If the design is not distinctive enough to be considered as a trademark, your best option would be to register just for a word trademark. In that case, you can use the word mark and not limited to use of the mark in all other configurations in the future.

Similar with the a stylized form of a word trademark - if you can, register a word and a stylized form as two separate trademarks. Otherwise, consider to register only a word form mark. You can always file an additional trademark to protect any other additional elements of your product of service name.

The bottom line, if you only have to file one trademark application, think of the combination, which includes the most number of the distinctive elements. At the same time, keep in mind that the more complex the mark, the  less flexibility you have to use the mark in various forms. Contact us now for your FREE consultation with a Trademark Attorney.

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When and why should you file an intent-to-use trademark application?

US laws allows you to file a trademark application even before you start using the mark in commerce, in the ground that you intent to start using the mark within six months from the date of the approval of the application by the USPTO (the office issues what is called A Notice of Allowance – a document “allowing” you to present trademark use for the registration purpose). If you do not start using the mark by the required date, you can extend this deadline for another six months (up to three years total) but each time a fee is involved ($150 per class).

The main advantage of filing an intent-to-use trademark application is that your filing date becomes your presumed date of first use of the mark once you actually start using the mark and satisfy all the requirements for the trademark registration. The date of first use can be very important in case of a potential conflict with another trademark holder or with the USPTO to show that you started using the mark earlier than your opponent. Another advantage is a trademark registration process is quite lengthy and can take up to one year. Intent-to-use filing basis allows businesses not to invest a lot of money into a brand development (including advertisement campaign, product development, etc.)  only to find that a trademark application for some reason cannot be registered at all and they have to come up with a new trademark.

On the other hand, an intent-to-use application is more expensive. In addition to the filing fees, you have to pay $100 per class to file a Statement of Use (a statement from the trademark owner that the mark is in use in commerce and thus qualified for the federal registration). As mentioned above, you have to pay $150 per class each time you extend the deadline to present use.

Keep in mind that the Notice of Allowance will be issued for the trademark which meets all the requirements of the federal registration including its distinctiveness. Contact us now for your FREE consultation with a Trademark Attorney.

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What is use of the trademark "in commerce" ?

You do not have to show use of the mark to file a trademark application. However, In order to obtain a federal registration, a trademark must be “in use in commerce”. Any of the following will satisfy the “use in commerce” requirements shipment of the products, which bear the mark or on the product itself or its packaging or rendering services identified by the trademark:

 

    1. Across the state border (for example, between Florida and Michigan) or;
    2. Between a state and a territory border ( for example, between Florida and Puerto Rico) or;
    3. Between two territories (for example, between Puerto Rico and the Virgin Islands) or
    4. Between a state or a territory and another country (for example, between Florida and Puerto Rico and China)

The main reason behind these requirements is that if a mark is used within a state it is governed by the state laws only, and federal government has no authority over it.  It is really important to take note when you first start using the mark in commerce in case you have to defend your trademark in the court or before the USPTO and have to present evidence of first use. Such evidence can be an invoice showing the shipment of the goods or rendering services. With more and more companies offering goods and services over the Internet, it is easier now to show “use in commerce” even for a small business.  Contact us now for your FREE consultation with a Trademark Attorney.

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When Can I use my Name, Nickname or Initials in the Trademark?

Trademarks using personal names, nickname or initials are quite popular, especially among small businesses. However, they rarely make a good trademark.

But first a small history lesson… One of the reasons the personal names were not protected in the past is the idea that nobody should have an exclusive right to a personal name. Unless the mark obtained secondary meaning in connection with particular goods or services, it would be unfair to allow one John Smith to prevent all of the other Smiths from using their names for their businesses. That is why back in the days it was almost impossible to register a name as a trademark. Now, the situation has changed – individuals still have the right to use their names but only if they are not similar to other people’s names, which became a part of well-established trademarks. For example, if your last name is McDonald, you will not be able to open your own restaurant under this name (similar situation with the last name Lauren for fashion or Hilton for hotel business).

Trademarks with personal names are usually weak and take a lot of time and effort to become strong. It is very likely you can find a business in a local issue of Yellow Pages with the same or similar personal name in the title, which means that such trademark will not be able to effectively distinguish your products or services from your competitors’. If you name your business Jane’s Hair Salon, and your potential customer hears someone talks about it and thinks, “I know I’ve heard about two salons with similar name. Which Jane’s Hair Salon are they talking about?” Well, you got the idea…

But it does not mean that personal names can never be used as a trademark. Below are the situations when use of the names is permissible:

Last name

  • If you have a very rare, strange or unique name (e.g. Orville Redenbacher), it can be a very strong trademark.

  • If you have used a personal name as a part of the trademark for a long time, that it acquired secondary meaning, and the public started associate a personal name with your goods services. McDonald’s or Levi’s once were ordinary names, which obtained a separate meaning through extensive use on the market as trademarks.

  •   If your name has an additional meaning (e.g. John King, Tom Green), which does not describe your products or services.

  • Famous historical names (e.g. Ceaser, Lincoln, etc.). It is implied that the mark is most likely used as a non-personal name.

  • Marks that are “primary surnames” do not qualify for a federal registration, unless they acquired a secondary meaning in connection with the goods or services throughout a substantial use or with an additional term(s) that makes the combination inherently distinctive as a whole.

First names and Nicknames

First names are usually ever weaker that the last names as they are very common. However, they can be used with additional term to become distinctive for the trademark purposes (for example TRADER JOE’S). Like with last names, you cannot use your first name in the same line of business if it is too close with the famous name. For example, if you name happens to be Gucci Johnson, you won’t be able to use your first name to start a clothing line under GUCCI’S APPAREL).

Initials

Using your initials is the same as using your first or last name – it does not strengths or weakens your trademark. All of the above rules for the last and the first names apply to the initials. However, if a trademark consists completely of letters, which are not persons initials, it can be quite distinctive (for instance, PSF).

In addition, please keep in mind that someday you will want to sell your business and your name, which became a part of the trademark, will be transferred along with the business. That means that a stranger will operate under your name and may prevent your children or relatives to use their name in their future businesses. Contact us now for your FREE consultation with a Trademark Attorney.

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Is it possible to conduct a free trademark search?

Before filing a Trademark Application you need to determine whether another business has already filed for or is already using a trademark that is identical or similar to the one you want to use to ensure that you will not violate someone else's trademark rights.

There are some great free tools out there anyone can use to conduct a trademark availability search:

USPTO website: You will be able to search federally filed and registered trademarks by a trademark name, class, owner and other criteria. However, it is impossible to search different spelling variations, synonyms, word placement or find any state trademark registrations or unregistered trademarks enforceable under common-law rights.

Secretaries of State websites.  You will be able to search state trademarks by a trademark name, class, owner and other criteria. However, similarly with the USPTO website, it is impossible to search different spelling variations, synonyms, word placement or find any federal trademark registrations or trademarks enforceable under common-law rights.

Unregistered trademark search can be done through internet, yellow pages, local business listings, divisions of corporations in local Secretaries of States, periodicals, phone directories, business rating services, etc. This kind of search may reveal if someone is using an identical or similar trademark but not necessarily show federally registered trademarks.

Even if you combine all three searching strategies together, it is only the first step in trademark clearance. Depending on the type of the trademark, the analytical search compares your trademark which looks and sounds alike, have the same or similar meaning in English or other languages, and  may include searching for synonyms, phonetic equivalents, alternative spelling or common misspellings, anagrams (words with the same rearranged letters). It is also important to take into consideration if the potentially similar trademark was registered on Principal or Supplemental Register, has any disclaimed elements, color claim, or if certain elements of the trademark provide stronger commercial impression then other. This kind of search is extremely important for any business to ensure its proposed trademark is not likely to cause confusion with someone else’s mark.

So is it possible to conduct a free trademark search? Absolutely! Will it be comprehensive? Probably not…

Contact us now for your FREE consultation with a Trademark Attorney.

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What is a State Trademark Registration?

Companies are often confronted with the question of whether they should register a trademark or service mark with the United States Patent and Trademark Office or simply register their mark with a state. If you use your trademark solely within one state, you can register your trademark within this state trademark agency. State registration is usually less expensive, however the benefits of a federal registration are far greater than those offered under state registrations. With the growth of the Internet and the rise in nationwide commerce, many businesses find they are better off with federal, as opposed to state, trademark registrations. For information about state registration requirements, you should contact the individual state trademark office.

Contact us now for your FREE consultation with a Trademark Attorney.

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What should I do if someone is using my trademark in a domain name ?

With the rise of the Internet, it is very common now to come across the following problem. You, as the owner of a trademark, leaned about a domain name registered by someone else, which is the same of very similar to your trademark.  What should you do?

Before taking any action, it is really important to review main issues underlining this problem:

 

  1. If the domain name used for commercial purpose?
  1. If so, does such use is likely to cause confusion among consumers?

Let’s review two different examples:

Example 1: John registered a domain name www.xyz.com, where he published his favorite recipes, giving cooking tips and writing articles about his culinary experience in different countries. As he does not use this domain name in commercial purpose and did to use “XYZ” to identify a source of his goods or services, he is not using the domain name as a trademark. Thus, XYZ Publishing, a publishing company and an owner of XYZ trademark, which covers publication of cooking books, decides to accuse John of trademark infringement, generally will not be able to stop John’s use of his website.

Example 2: John’s website became very popular so he decided to write and sell his cooking book on his website. In this case, John uses the domain name as a trademark and consumers are likely to confuse John’s website with XYZ Publishing’s trademark. Therefore, XYZ would have a basis to sue for a trademark infringement.

In order to avoid this kind of situation, it is recommended prior to registering a domain name to conduct a trademark search to find out if there are conflicting trademarks, which will preclude commercial use of the domain name in the future. Similarly, for trademarks owners, a comprehensive trademark search should reveal confusingly similar domain names, in which case it may be worth to pick a different name.

It is always important to consult with a trademark attorney regarding your particular problem. Contact us now for your FREE consultation with a Trademark Attorney.

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What should I do if my trademark application was refused for registration?

During the process of a federal trademark registration it is quite possible your application may be refused or postponed for a number of reasons, specified in the trademark laws. To that affect, the USPTO may issue an official document, some of which are listed below:

  • A Suspension letter suspends the Action on an application. An application may be suspended for a variety of reasons. These include waiting for the disposition of a prior pending application to be determined or waiting for an assignment of ownership to be recorded. Applicants do not have to respond to suspension letters.
  • An Examiner’s Amendment is a written acknowledgment of an amendment made to an application. Generally the examining attorney and the applicant or the applicant’s attorney are in contact and they may reach an agreement that the application needs an amendment. It is issued as a written memorialization of such agreement.
  • A Priority Action is a letter in which an examining attorney describes specific outstanding requirements that the applicant must meet before an application can be approved for publication. The applicant or the applicant’s attorney must respond to a priority Action within 6 months from the date the priority Action is mailed. If the applicant or the applicant’s attorney fails to do so, the application will be declared abandoned. Examining attorneys have no discretion to extend the time for filing a response to an Office Action. The benefit of a priority Action is that, if the applicant responds within 2 months, the application will be given priority in processing.
  • An Office Action is a letter in which an examining attorney describes the legal status of a Federal Trademark application where the examining attorney will disclose if the Federal Trademark search yielded any conflicting Marks. The examining attorney will also send an Office Action to issue substantive refusals to registration (such as a likelihood of confusion, mere descriptiveness, etc.) that arise, as well as to make any procedural requirements. Applicants or the applicant’s attorney must respond to an Office Action. If applicant or the applicant’s attorney fails to do so, their applications will be declared abandoned.
  • A Non-Final Office Action is correspondence from the U.S. Government that raises new issues and usually is the first phase of the examination process. An examining attorney will issue a non-final Office Action after reviewing the application for the first time. If a new issue arises after the applicant responds to the first Non-Final Office Action, the examining attorney will issue another Non-Final Office Action that describes the new issue(s) and continues any that remain outstanding.
  • A Final Office Action is the last Office Action that an examining attorney issues. It finalizes any outstanding issues. An applicant or the applicant’s attorney’s only response to a Final Office Action is compliance with the requirements or appeal. When a trademark registration is refused by the examining attorney, the applicant or the applicant’s attorney may appeal to a U.S. Government trial and appeal board.

One of the most common problems for a trademark applicant is to receive an Office Action.

Why not just read a textbook or search for some answers online to respond to a trademark refusal? General answers on how to answer office actions are not geared to specific trademarks issues. Each registration of a mark is specific to the facts involved. Sometimes just a better specimen, identification of goods and services or a disclaimer is all it takes. On the other case, there may be quite substantive issues, which are called absolute grounds for refusal, such as:
1. The mark is merely descriptive or deceptively misdescriptive of the  applicant's goods or services.
2. The mark consists of or comprises immoral, deceptive, or scandalous matter.
3. The mark may disparage or falsely suggest a connection with persons  (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute.
4. The mark consists of or comprises the flag, coat of arms, or other insignia of the United States or any state, municipality, or foreign nation.
5. The mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual's written consent; or the name, signature, or portrait of a deceased U.S.
6. President during the life of his widow, if any, except by the widow's written consent.
7. The mark resembles a mark already registered by the Patent and Trademark Office (PTO), so that use of the applicant's mark would likely cause confusion, mistake or deception.
8. The mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant's goods or services.
9. The mark is primarily merely a surname.
10. The mark, as a whole, is functional.

Depending on the ground(s) of refusal of your application, during our free consultation, we will discuss your case and assist you to develop an effective and affordable strategy to overcome these objections and finalize the trademark registration. If, in our opinion, the objections are too severe, we will inform you accordingly so you can make a rational business decision on how to proceed further.

Contact us for a FREE consultation with a Trademark Attorney.

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This information is not legal advice. You should consult with an attorney if you have legal questions that relate to your specific situation.

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Phone: 1 (201) 645-5616

 

Email: info@ownyourtrademark.com

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