De-mystifying Trademarks

Introduction:

I receive a lot of questions pertaining to trademarks.  There are several facets to the topic.  First is the scope of protection.  Second is what is a permissible trademark and third is what is the process of applying for federal registration of a trademark.

Discussion:

The scope of protection is vague.  A trademark identifies a product or service available in the market place.  Ford Motor Company is the business name of a car manufacturer but Ford is the trademark identifying a brand of cars, to be distinguished from the Chevrolet brand of cars.  My point is that the trademark applies to the product or service and not the business name.  Stated differently, you do not trademark your business name but rather you trademark the identifier (name or mark) that identifies the origin of your product or service.  (When you apply for federal registration of your mark, you are required to identify the products or services which your mark will identify.)

If you have followed my earlier posts, I always encourage the use of arbitrary, fanciful or coined words as trademarks.  They are the strongest marks and most easily protected.  Marks that are merely descriptive of the product or service are not registerable in the USPTO.  For example “Fast Car Wash” merely describes the service.  Suggestive marks may be registerable but they are weak.  Also the line between merely descriptive marks and suggestive marks is very blurred.  For example, a mark “Instant Car Wash” might be viewed as either descriptive or suggestive.  I would suggest “Impact Car Wash” might be a better mark.

Generic words are never registerable.  For example, “Raisin Bran” is a generic mark merely stating the contents of a particular breakfast cereal.  An acceptable mark would identify the brand such as Kellogg’s® Raisin Bran.

No mark can be applied to a good or service that would be likely to cause confusion in the mind of an average consumer in the marketplace as to the origin (supplier or maker) of the product or service.  One mark cannot be confusingly similar to an existing mark.  This is a vague standard.  What is the relevant marketplace?  The market for consumer products is different than the market for financial services or heavy industrial equipment.  The market for expensive jewelry (a consumer product) is different from the market for toilet tissue (also a consumer product).  A purchaser shopping for an expensive item can be expected to take more time and care in selecting the item, in contrast to an inexpensive item that can be expected to have a short useable life.  Therefore, the shopper of the expensive item can be expected to be less readily confused by a somewhat similar mark.  In contrast, the producer of an “impulse purchase” item may be entitled to broader protection from a similar appearing or sounding mark of a competitor.  The point is that in evaluating whether your proposed mark is a good or registrable mark, depends on understanding the market (or channel of trade) in which the mark will be used.  Again, a vague standard with no bright line boundaries.

As a real life example, a client was denied a trademark for a facial cosmetic surgical procedure because the mark was confusingly similar to a mark for a face cream.  The USPTO demonstrated that face creams were routinely marketed by cosmetic surgeons, thus cream product and cosmetic surgical procedure were in the same marketplace.

The process for seeking registration of a trade or service mark is relatively straight forward.  Unlike patent applications, an application for trademark registration requires completion of an electronic form.  You must be able to state when the mark was first used in commerce or whether you are filing the application for registration as an “intent to use mark” (which you must use within 3 years of the examiner accepting the mark).  If the mark is a stylized logo, you must provide a pdf or tiff image having the requisite dimensions and pixels.  Except in narrow circumstances, the applicant cannot amend the mark after the application is filed.

You must also be able to define the products or services with which the mark will be used.  This is not straight forward, the USPTO has its own vocabulary and grammar that is employed to create this listing.  The trademark examiner will often work with the applicant to reformat the description.  However, once the application is filed, you will not be permitted to expand the listing.

Conclusion:

The above is a short synopsis of trademark practice and filing procedure.  Hopefully is removes some of the mystery.  You may also find my earlier post “What is a Trademark” helpful.

 

© David McEwing 2021