TIPS FOR A SUCCESSFUL TRADEMARK APPLICATION – BEHIND THE SCENES AT THE USPTO
Having a strong trademark is the foundation for the success of your private label brand. When you obtain a federal trademark from the United States Patent and Trademark Office, it allows you to not only ensure nobody copies the name of your brand or product, but it also allows you to enforce against Listing Hijackers. It also allows you to determine who is allowed to sell your product, and on what channels.
When you submit your application for a trademark to the United States Patent and Trademark Office, the USPTO will assign an “Examining Attorney”, who will conduct a thorough investigation to ensure that your trademark is eligible for trademark protection. It seems like a long process, and the USPTO takes longer than the European Union Intellectual Property Office. However, there is a lot of work behind the scenes that must be done by the USPTO Examining Attorney before they can issue your trademark registration. Specifically, the Examining Attorney will investigate the following factors:
- What type of Trademark is this?
- Is the mark generic?
- Is the mark descriptive?
- Is the mark suggestive?
- Is the mark arbitrary?
- Is the mark fanciful?
A Note about Trademark Infringement – A USPTO Registration Does Not Prohibit an Existing Trademark Owner from Bringing an Infringement Lawsuit Against You
You may notice that “Does the proposed mark dilute or infringe on an existing mark?” is missing from this list. Trademark dilution is when your mark dilutes an existing mark, which means that it makes the existing mark have less value than before. For example, a proposed mark of Thinovo Computers would certainly dilute the Lenovo Computers mark. Because the USPTO Examining Attorney does not check for dilution, it is the responsibility of each business owner to ensure their trademark does not dilute or infringe on an existing trademark. Furthermore, because the USPTO is not checking for dilution, claiming you have a registered trademark for Thinovo will not stop Lenovo from bringing a trademark lawsuit against you. (And in the event that they win, you will owe them damages and may have your trademark for Thinovo cancelled). This is why it is vital that you or a qualified trademark attorney perform a thorough trademark search for your proposed brand or product name before you begin using it.
Assuming that your search yields that your name is not dilutive or infringing on another mark, you now may proceed towards the rest of the list.
Is the Mark Generic?
The first thing the Examining Attorney will review is whether your proposed trademark is generic. Generic means exactly what you think it means. Suppose you design a toy for kids that has a man with wings and you try to trademark “Children’s Toy,” you’ll get a refusal on the grounds that the mark is generic. Similarly, a brand name for “Active Sportswear” for a company that sells athletic wear would get a refusal for genericism.
TIP: Ask yourself if the mark is a common service or product name?
Is the Mark Descriptive?
The next thing the Examining Attorney will examine is whether the mark is descriptive. This means the Examining Attorney will determine if the mark merely describes the product or service, or a characteristic of the product or service. If your proposed mark is “SUPER ABSORBENT TOWEL” for a paper towel, the Examining Attorney will have to issue a refusal on the grounds that the mark is primarily descriptive. However, this refusal can be overcome if you provide that your mark has acquired distinctiveness, which will generally require an attorney to prove on your behalf. In particular, three types of evidence can be used to prove acquired distinctiveness:
- Prior Registrations: If you have ownership of one or more other trademark registrations for the same mark, you may be able to prove acquired distinctiveness.
- Five Year’s Use in Commerce: If you have continuously used the proposed mark in commerce for five years or more, you may be able to claim acquired distinctiveness.
- Other Evidence: This is going to be tough, but the USPTO have a list of evidence that Examining Attorney can consider that it published in 37 C.F.R. §2.41(a)(3).
TIP: A descriptive mark is protectable and registrable, but only if you can prove acquired distinctiveness. You will likely want to reach out to a qualified Attorney if the Examining Attorney issues a refusal on the grounds of being a descriptive mark.
Is the Mark Suggestive?
A suggestive mark is a trademark that suggests an attribute of your product without describing it. Imagination would be required to determine the actual nature of your product. An example of this would be the mark “NO SWEAT” for an air conditioner.
TIP: Determine how much imagination is required to tie your proposed mark to your product. The more imagination that is required, the better your chance of securing a trademark registration with the USPTO.
Is the Mark Arbitrary?
A lot of people think that arbitrary is a bad thing, and truth be told, some of Amazon’s policies do seem rather arbitrary. However, in the world of trademark law, it’s a great thing to have an arbitary trademark. Arbitrary trademarks are those that use a real word, but the word is not connected to the dictionary meaning in any way. For example, Brother is a great example of an arbitrary mark, since the word brother does not relate to printers in any way except when referring to an Brother printer.
TIP: Arbitrary marks are very strong, and usually granted approval by the USPTO without much headache.
Is the Mark Fanciful?
The last test the USPTO evaluates is whether the mark is fanciful. Fanciful marks are trademarks that are a made up word or phrase. For example, Bose is a great example of a made up word, since Bose makes you immediately think of speakers and headphones.
TIP: These are the most coveted trademarks, as they are the easiest to obtain trademark protection for and the easiest to enforce. They are very strong trademarks.
AVOID A STATUTORY BAR TO REGISTRATION
Once the USPTO has determined your mark qualifies for registration, the next step the Examining Attorney will take is to determine if there are any statutory bars to registration. A statutory bar to registration is when your trademark cannot be registered because registration is against the United States Law. The Examining Attorney will investigate whether your mark cannot be registered because it falls into one of the following categories.
- Is the mark scandalous, disparaging, or immoral?
- Is the mark deceptive?
- Is the mark a name, signature, or portrait? If so, is permission properly obtained?
- Is the mark a national symbol, name, or symbol of a state/foreign country?
- Is the mark deceptively misdescriptive, or geographically misdescriptive?
- Is the mark confusingly similar to another mark?
Is the Mark Scandalous, Disparaging, or Immoral?
Under the Lanham Act §2(a), marks that are “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable…giving offense to the conscience or moral feelings; … or calling for condemnation” cannot be registered. See In re Fox. In particular, the USPTO will determine the meaning of the mark using a dictionary, media usage, and the nature of the good or service, as well as determine whether the meaning would be perceived as scandalous/immoral/disparaging by a substantial majority of the public at the time of registration. Similarly, marks that disparage another person or group of people, or another product are not permitted to be registered.
TIP: Ask yourself if the mark would be offensive to most people in the general public of America. If the answer is yes, you may have issues getting your trademark registered. Furthermore, you may violate Amazon’s Offensive Products policy.
Is the Mark Deceptive?
Deceptive marks are another bar to registration under the Lanham Act §2(a). A deceptive mark is one that falsely describes goods or services. For example, a mark for “Lovee Lamb Car Seats” when you are selling synthetic car seats would be considered deceptive, because your mark falsley describes your goods or services and purchasers are likely to think your car seats are made from lamb when they are really synthetic. The USPTO uses a three part test to determine if the mark is deceptive. The Examining Attorney will examine:
- Does the mark falsely describe the goods or services?
- Are prospective purchasers likely to believe the misdescription? AND
- The mistake is likely to materially affect the purchaser’s decision.
TIP: Deceptive marks are usually descriptive. Fanciful or arbitrary marks are rarely found to be deceptive.
Is the mark a name, signature, or portrait? If so, is permission properly obtained?
Another limit to registration is a mark that falsely suggests a connection with a person, institution, or national symbol. Marks that make you think the mark is associated with another person who is living or dead, without obtaining their permission first, cannot be registered. However, a refusal on these grounds is very easy to overcome if you can provide a letter authorizing your use of the person’s name or identity. Similarly, a mark containing the name, portrait, or signature of a living person without their written consent will not be registrable with the USPTO. This rule is in place to protect the privacy and publicity of individuals by preventing others from free-riding on another’s reputation. Similarly, using someone’s name to sell your product online even without a trademark will set yourself up for a lawsuit from them or their estate (if the person is deceased) for invasion of the right to privacy and publicity.
The USPTO uses are four part test to determine whether to refuse registration under the grounds that the mark falsely suggests a connection with a person, institution, belief, or national symbol. It is:
- Is the mark identical or very similar to another party’s or institution’s name or identify?
- Would the mark be recognized as similar to the other party’s name or identity by the public?
- Is the other party commercially connected with the applicant?
- Is the name or identity of the other party or institution sufficiently famous that association will be presumed?
TIP: Ask yourself if most of the public will think you are associated with the person or institution before you attempt to register a mark that is similar or identical to their name. For example, registering Bill Gates Software or a mark containing Alicia Key’s signature will not be allowed without obtaining written permission.
Is the mark a national, state or municipal insignia?
The USPTO will also not register a mark that contains a flag, coat of arms, or insignia of the United States, a US State, a municipality, or a foreign country. This is because marks using these elements may suggest a false sponsorship to the general public, which would give the user an unfair competitive advantage in the marketplace. However, this is not an absolute bar to registration. You are allowed to use these symbols within your mark; however, you must disclaim the element from your mark.
TIP: If you wish to register a mark containing a national/state/municipal/foreign symbol, flag, insignia, or coat of arms, remember to disclaim that element from your registration.
Is the mark deceptively misdescriptive, or geographically misdescriptive?
One of the other areas the USPTO can refuse to register a trademark under is if the mark is misdescriptive. Under the misdescriptive category are two distinct misdescriptions – primarily deceptively misdescriptive and geographically deceptively misdescriptive. Primarily deceptively misdescripive is when the mark misdescribes the goods (and the public is likely to believe the misdescription), such as a mark for “Best Butter Ever” when the item being sold is margarine and not really butter. Geographically deceptively misdescriptive is when the mark contains a known geographic location, consumers will think the goods are made/sold from that location, and the purchasers are likely to be mislead because of this deception. For example, a mark for “Philadelphia Cream Cheese” would be geographically misdescriptive if the goods are actually made in New York and have no association with Philadelphia (a county and city in Pennsylvania).
Is the Mark Confusingly Similar to an Existing Mark?
The most important element the USPTO will look at is whether the mark is confusingly similar to an existing mark. It is important to note that just because the USPTO does not find a mark confusingly similar does not prevent a trademark owner from bringing a trademark dilution or infringement lawsuit against you for using a mark that dilutes or infringes on their mark. This is why it is important to have a trademark attorney conduct a thorough trademark investigation prior to beginning your company.
The USPTO will balance the following factors to determine if the mark is confusingly similar to an existing mark:
- The similarity between the marks in terms of appearance, sound, connotation, and commercial impression.
- Similarity between the relevant goods or services as described in the application.
- Similarity of marketing channels.
- Conditions under which goods/services are offered in the marketplace, which means how much time purchasers will take to investigate a product before making the purchasing decision.
- The fame of the existing mark
- The number nad nature of similar marks in use on similar goods.
- The extent of actual confusion, if the mark to be registered is already in use.
- The range of goods for which the mark is used. (If you claim a broader range of goods, then you are less likely to be able to get registration when a confusingly similar situation arises.)
TIP: You should reach out to an experienced trademark attorney when you encounter an Office Action that proposes refusing registration on the grounds of being Confusingly Similar to an existing mark.