Trademark Law is complex and very nuanced. This guide does not cover all the nuts and bolts of trademarks, but I hope it will be helpful in giving you a general overview of how to select, register and protect your trademark.
Selecting a Trademark
A trademark allows us to differentiate one company’s product or service from that of another.
To help us tell the difference between the goods of each company, trademarks should be distinctive. There are five degrees of such distinctiveness that make the trademark either weak or strong. They are discussed below. The more distinctive the mark is, the better protection it will have. Refer to this guide when you need to choose your next trademark, as the weak trademark is not likely to be registered.
Scale of strength
Fanciful – the strongest trademark is a made up word. For example, Xerox.
Arbitrary trademark uses a real word that is applied to an unrelated product or service. For example, Apple brand is used for computers and phones.
Suggestive trademark suggests the features, but does not describe the product. Such a mark invites the buyer to use imagination, thought and perception to understand what the product or service is about or what outcome it will produce. For example, Netflix.
Descriptive trademark describes what the product is used for or describes what the product’s ingredient, quality, characteristic, function, feature, purpose, or use is in regular or favorable words. This type of trademark usually cannot be registered, unless the brand has been used in commerce for a long time and has become popular.
Generic trademark uses a word or phrase for the type of product or service itself, for example “Spoon” for a spoon brand. This type of trademark cannot be registered.
Searching Existing Trademarks
If your trademark conflicts with a previously registered or used trademark, USPTO will not register your trademark. In order to minimize the risk of a failed registration, you should conduct a comprehensive trademark search. At minimum, you should review the database of registered trademarks.
To search the database of previously registered trademarks, you can use USPTO search system called TESS (Trademark Electronic Search System). The system can be used for both word marks and image marks.
Trademarks can be similar and confusing to the public even if they do not have exact spelling or image. That is why you should use the following search strategies for coming up with variations of your chosen trademark:
- phonetic similarity
- orthographic similarity and misspellings
- prefix, infix and suffix variations
- vowel and consonant similarity
- plurals and stemming abbreviations and acronyms
- other similarities
To search currently-in-use or intended-to-be-used (not necessarily registered) trademarks, you should conduct a more in-depth search. Here are the places you can conduct such a search.
- Secretary of State records.
- A search among more than 20 million secretary of state business records.
- Identical and very similar results from all (+1000) top-level domains.
- Web search combining the trademark name with your most important keywords.
- Social media search will explore the use of your trademark name in the world’s largest social networks: Facebook, LinkedIn, Twitter, Instagram and Pinterest.
- Check if the trademark name is registered as a user name in 100 social networks.
Registering a Trademark
You can apply for a trademark with USPTO if you are the owner of the trademark and if you intend to use the trademark in the future or you already use the trademark. Before it will be registered as a trademark, you must sell (not just advertise) your product or service in more than one state and in a foreign country (but not only in a foreign country)
When you register your trademark, it will be placed on a Principal Register or a Supplemental Register.
Principal Register offers better protection and proof that your trademark is strong. Normally, fanciful, arbitrary, suggestive or descriptive marks with long use are placed on the Principal Register.
Supplemental Register provides limited protection, but you can still use the ® (R in a circle) symbol as a deterrent to the competitors. Descriptive trademarks that have the potential to become distinctive after some time are placed on the Supplemental Register. After such marks become distinctive, they can be placed on a Principal Register through a new application.
Generic trademarks cannot be registered at all.
To file an application for a trademark, you will use a Trademark Electronic Application System (TEAS) https://www.uspto.gov/trademarks-application-process/filing-online/initial-application-forms. On the online form, you will be asked to provide the applicant’s name and address, citizenship of the applicant, basis for the filing, drawing of the mark and types of goods and services the trademark will be used on. To find the the appropriate listings of goods and service, you should use Acceptable Identification of Goods and Service Manual at https://idm-tmng.uspto.gov/ After completing the form, you will be asked to pay a filing fee.
Responding to Office Actions
Once you submit your trademark application, an examining attorney will review it. If there are defects on the application in form or substance, the examining attorney will issue an Office Action and reject the application. Office action will ask you to correct the problems. Many times, the examining attorney will also suggest how to fix the rejection, for example, by changing the description. You will have six months to respond to the office action, otherwise the application will be abandoned. If the problems from the first office action are not properly addressed in your response, there will be a final office action rejecting the application. You will then have another opportunity to persuade the examining attorney. If the final rejection is still not overturned, you will be able to appeal, but you still must submit notice of appeal within 6 months after receiving final refusal.
Common reasons for issuing an office action are, but not limited to:
- The mark is only descriptive or deceptively misdescriptive
- The mark is geographically descriptive
- The mark is generic
- The mark is only a surname
- The mark can be confused with existing trademark
- More than one mark has been submitted on the application
- Another person or company owns the trademark
- Specimen provided is not listed as a type of good the mark will be used on
- Improper specimen
- Indefinite description of goods or services
- Listed goods do not belong in the international class
- Incorrect identification of the applicant
- Application filed by unauthorized party
- Mark drawings differ from the mark shown on the specimen
- Lack of dates on the use-based application
- Lack of consent of the person whose name is used as trademark
- Lack of statement confirming good faith intention to use the mark
Properly Using a Trademark
In order to keep the trademark, you must use it. You must use it properly too.
When possible, your goods should display the ® symbol on the trademark or at least mention the word “brand” after the trademark. This will give notice to others that your brand is officially registered.
When trademark is used with the other text, distinguish the trademark by capitalizing or italicizing the font. Additionally, the first time the trademark is mentioned in the promotion, add the name of the product itself after the trademark, for example, Nespresso espresso appliance.
Use your trademarks as adjectives, not nouns, for example, “can you pass me the Kleenex tissue?” instead of “can you pass me Kleenex.” Do not use your trademark as a verb, for example, “Can you Photoshop this picture?” Use your trademark’s design and wording consistently throughout your products and advertisements.
If you license your trademark to others, you should keep an eye on how they are using your mark. Create guidelines for them on how to properly use your trademark. Ask them to send you samples of the products once in a while to confirm the trademark is properly placed.
Monitoring a Trademark
You should monitor new trademark registrations and check if there are any new marks that can create confusion with your trademark. If infringing trademarks enter the marketplace and you allow them to exist for a long time, you risk losing your rights to contest the conflicting marks later. Therefore, it is important to make sure that you deal with the trademarks that may be confused with yours. If you miss any infringing marks during your monitoring efforts, you can still use cancellation or court proceedings.
To monitor for the conflicting trademarks, you should review the Official Gazette, a publication where USPS publishes all upcoming trademark registrations.You will have 30 days to take action to prevent the registration of other company’s trademark. You can monitor the opposing trademarks when they are likely to cause the following in relation to your trademark:
- possible confusion;
- descriptiveness and genericness;
- misdescriptiveness and deceptiveness;
- the mark comprises scandalous matter; and
- for intent-to-use applications, lack of a bona fide intent to use the mark in commerce.
Maintaining a Trademark
Trademarks can live forever. If you properly use the mark and renew the registration on time, your trademark can exist for an indefinite amount of time.
After 5 years of use, if there are no existing challenges to your trademark, the trademark can become incontestable. Incontestable marks offer stronger protection as the mark is immune from attack on the basis of validity or descriptiveness and the registration is a conclusive evidence of the ownership. Incontestable trademark also gives exclusive right to use the mark. To receive the status of incontestability, you should file Section 15 declaration of Incontestability. You must have used your mark within the last 5 years; you must file Section 15 declaration within 1 year after 5 years of use; there must not be any pending claims against your trademark.
Assigning or Changing Ownership of Trademark