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The following is a very general overview of marks (e.g., trademarks and service marks). Because this overview is only general, and not intended to apply to any specific situation, consult with me or another competent attorney before relying on it.
Broadly, a mark is a symbol, which can be a character, word, phrase, logo, design, color, sound, and/or scent, that is used in commerce, denotes a good and /or service, indicates the unique source of that good/service, and distinguishes that good/service from those of other sources.
For example, any one or combination of the following can serve as marks:
Trademark law protects distinctive source identifiers used on goods/services.
There are several categories of marks, including:
Trademarks are used with goods. Service Marks are used with services. A company name is not a mark, unless also used to identify the source of goods/services. Trademarks and Service Marks are used differently.
Because nothing in life is simple, and even if it is, humankind has a knack for creating unnecessary complexity, the term “trademark” has two (rather confusing) meanings. The first narrow meaning is a mark used with goods.
The second broader meaning refers to marks generally. For example, “trademark law” (broad meaning) covers marks that are applied to goods (“trademarks” under the narrow meaning), marks that are applied to services (“service marks”), as well as certification marks and collective marks.
To help alleviate some of the confusion, I endeavor to use the term “mark” to refer generally to all types and forms of marks.
But that doesn’t resolve the problem completely. For example, in the US, to register any type of mark, one still must properly file a registration application in the US Patent and Trademark (the broad meaning) Office (USPTO), which will apply the law of trademarks (the broad meaning), whether or not the application is for a trademark (narrow meaning, i.e., applied to a good). So recognize that when the term “trademark” is used, one must analyze the context of that use to know whether the communicator means “mark” generally, or is referring to a mark applied only to goods.
Although marks, copyrights, and patents confer different rights, sometimes more than one of them can “protect” a given product. The rights in a mark can protect a distinctive source identifier used in commerce. A copyright can protect an original “expression”, such as a writing, musical score or recording, carving, sculpture, illustration, painting, photograph, movie, etc., once it’s “fixed” (e.g., recorded, captured, etc.) in a tangible medium (e.g., paper, canvas, wood, marble, audio tape, CD, DVD, electronic file, etc.). The bundle of exclusive rights conferred by a patent can protect an innovative concept, such as by providing the rights to prevent others from making, using, selling, offering for sale, or importing embodiments of that innovative concept.
One can obtain rights in a mark in any of several ways:
Rights in a mark:
The first user of a mark within a given state can prohibit use of confusingly similar marks by others on related goods/services in that same state.
But the owner of a federally registered mark can prohibit use of confusingly similar marks by others on related goods/services anywhere in the U.S.
In addition, infringement of a federally registered mark can result in award of:
When a pirate is selling counterfeit goods bearing a federally registered mark, the owner of that mark can be entitled to not only substantial statutory damages (i.e., fixed monetary damages, thereby avoiding the need for the mark owner to prove the actual amount of their loss due to those sales of the counterfeiter’s goods), and even a tripling of those statutory damages (i.e., “treble” damages).
Federal registration of a mark with the USPTO on what’s known as the “Principal Register” also enables the mark’s owners to register with the U.S. Customs and Border Protection Agency and enlist their help in fighting imported infringing goods.
Furthermore, a registered mark can be used in a domain name dispute to help block a domain name owner who is cybersquatting on a domain name that is identical to or confusingly similar to the mark.
Note that the USPTO takes no part in enforcing the marks it registers. Mark owners are responsible for monitoring and addressing potentially infringing activities.
Lastly, although enforceable only in the U.S., your company’s U.S. registration application can be used as a basis for seeking registration of its mark in foreign countries.
When evaluating a mark’s strength and/or registrability, I first consider whether the mark is improperly descriptive of the goods/services with which it is (or will be) used.
For the purposes of federal registration, a mark is improperly descriptive if it is:
Of these, the most common concern is whether the mark is merely descriptive. For example, although pizza entrepreneur Jo wants to call her pizza shop JO’S PIZZA, such a mark doesn’t qualify for federal registration, because it is overly descriptive, and thus not sufficiently distinctive. Of course, Jo can still call her shop Jo’s Pizza, but so can anyone else, and Jo won’t have any way to stop them (at least under federal law, and likely under the law of her state). On the other hand, JO’S ZA, or better yet, JOZA just might prove to be a registrable mark, since the word “za” might not yet be (and maybe never will be) widely recognized as shorthand for “pizza”.
Marks that only hint about the underlying goods/services are legally good, and marks that leave a typical purchaser in that market clueless about the goods/services are even better (think EXXON, CENTRUM, XEROX, VIAGRA, VERIZON, etc.). By the way, the attorneys at the USPTO who are responsible for examining marks typically do not rely on the spelling of a “word” mark (i.e., a “brand name”, alphanumeric mark, and/or textual mark that is not limited to any particular font, style, etc.). Instead, because consumers often reference a word mark via speaking it, the primary focus of the examination is on how the text of such a mark sounds (i.e., the audible impression it creates when spoken). In contrast, for logos that have no text, the focus of examination is on the visual impression, while those that include text are examined based on their overall impression.
Any double meaning of the words of a textual mark might play in your company’s favor in terms of registrability. The key will likely be whether the multiple interpretations that make the name a “double entendre” are associations the public will readily make, and whether at least one of those interpretations is not merely descriptive. Marks for which such a double entendre convinced the USPTO or courts include: SUGAR & SPICE for bakery products; THE HARD LINE for mattresses; THE SOFT PUNCH for a noncarbonated soft drink; and NO BONES ABOUT IT for pre-cooked ham.
As your company weighs its choices, remember that the world will know your company’s goods/services (and maybe even your company) by the mark, i.e., the identity, your company creates for them. The more distinctive that mark, the easier it will be for the world to remember your company’s goods/services, for your company to obtain federal rights in that mark, and for your company to exercise those rights to exclude pirates and thieves from attempting to cash in on them.
If a desired mark is not clearly improperly descriptive, the next step is to try to determine whether that mark (or one that is confusing similar to it) has already been registered, applied for, and/or in use. To facilitate that determination, I can perform a Preliminary Registrability Search (which is usually sufficient) and/or order a Professional Clearance Search from a professional mark searching service. My Preliminary Registrability Search typically costs about $100-$400 per mark per class, and can be completed relatively rapidly, often the same day as requested (often, the more distinctive the mark, the lower the cost of the search). A Professional Clearance Search typically costs about $550 to $1500 per class, and the turn-around time on that search is typically about 1 week. Although not definitive, the results of either type of Registrability Search can help determine whether the mark is likely to be unique enough to qualify for federal registration.
To be “unique enough”, your company’s use of its mark must not create a “likelihood of confusion” among consumers in the relevant market for your goods/services with respect to another company’s earlier continuous use of a similar mark for similar or related goods/services. If there is a likelihood of confusion, I might recommend any of several approaches, including purchasing the other mark, obtaining consent to use your company’s mark from the owner of the other mark, challenging the other owner’s rights to the mark, and/or adopting a different mark to avoid the potential for an infringement challenge or suit.
So what if Jo wants to use her surname (i.e., her last name or family name) as a portion of her mark?
As noted in the list of improperly descriptive characteristics above, the USPTO sometimes takes issue with registering marks that it considers are “primarily merely a surname”. U.S. trademark law recognizes that surnames are shared by more than one individual, each of whom might have an interest in using that surname in commerce.
The key is whether the “primary” significance of the mark to the purchasing public is that of a surname.
The UPSTO considers these factors when determining whether consumer perception of a mark would be that of a surname:
Generally, if a mark is not as a whole “primarily” merely a surname, and instead has acquired distinctiveness because the purchasing public has come to understand it as a mark and not just a surname, then the mark is registrable on the Principal Register. Otherwise, if the mark is primarily merely a surname, then the mark can be registered on the Supplemental Register. I discuss the Supplemental Register in more detail later, but for now, note that it does not provide the same level of legal protection for marks as the Principal Register.
Unfortunately for Jo, her surname of “Smith” means that although she could still use SMITH’S PIZZA if she chooses, that mark would likely be difficult to register, and she couldn’t stop others from also using it in the meantime.
Your company’s mark fails the likelihood of confusion test when it is more likely than not that a reasonable consumer of the same or related goods/services, upon encountering your company’s mark and exercising ordinary care, would be confused as to the source of those goods/services. That confusion can be manifested either by the consumer buying your company’s goods/services when they intended to buy a competitor’s, or buying the competitor’s goods/services when they intended to buy yours.
Different courts sometimes use different factors to determine if the use of a mark creates a likelihood of confusion with the mark of another regarding the source of the goods/services. Factors that are often considered when evaluating likelihood of confusion include:
If your company uses a word mark in conjunction with a logo, your company could seek to register the word mark alone, the logo without the word mark, or the logo with the word mark. Of the three, the word mark alone is more likely to be the most difficult to register, and the combination the easiest. Yet the word mark alone is most likely how your goods/services will be best known, so it typically would be the most valuable to register.
Once a registrability search indicates that a mark appears to be registrable, there are two common processes to federally registering that mark:
1. Via the “Intent-To-Use” process, which involves:
2. Via the “Prior Use” process, which involves:
I prefer the Intent-To-Use process because, in exchange for a relatively small additional USPTO fee, it typically provides much more flexibility in providing proper evidence of use of the mark versus the Prior Use process which can easily result in abandonment of the application if the evidence of use is refused as improper.
After I file your company’s application, at least 6 months typically pass before the USPTO-assigned Examining Attorney (“examiner”) reviews the application and provides feedback. When that feedback is provided, sometimes the examiner will express “objections” to the application that must be overcome by filing a properly evidenced and/or argued Response.
Once the Examiner is comfortable, the USPTO will publish the application for “opposition”. Publication of your company’s application makes it visible for third parties to evaluate whether they want to oppose the registration of your company’s mark. An Opposition is a proceeding within the USPTO via which an opposing party (typically a competitor) tries to prevent your company’s registration of the mark by presenting satisfactory evidence and arguments that registration will damage that opposing party. If no Opposition proceeding is initiated within the 30-day period following the publication date, and your company’s application is based on Prior Use, it is very likely the USPTO will issue a digital “Certificate of Registration” within the next 2 months. If your company’s application instead is based on Intent-To-Use, it is very likely the USPTO will send a Notice of Allowance sometime in the following 2 months.
When your company’s allowed application is based on Intent-To-Use, the USPTO provides 6 months in which to file acceptable evidence (“specimens”) of use after it sends the Notice of Allowance. Upon submission of a satisfactory reason for delay and payment of a USPTO fee, this deadline can be extended in 6-month intervals, up to a final deadline of 36 months from the date of the Notice of Allowance. If acceptable specimens of use have not been filed by the 36 month deadline, the application will be deemed abandoned, meaning your company will have to start the process over by filing a new application.
After submitting acceptable specimens of use, the USPTO typically will grant registration of your company’s mark for the goods/services identified in the application within a few months and will shortly thereafter issue a digital “Certificate of Registration”, which indicates your company’s mark is federally registered. Once your mark is registered, your company has federally enforceable rights in the mark, and can and should continue to use the mark per my Guidelines, including labeling the goods/services identified in the registration with the mark accompanied by the registered mark ® symbol.
To understand what the USPTO charges to register a mark, one must first understand the concept of “classes”. The USPTO segregates the universe of generic types of goods and services into roughly 45 classes or categories. Examples of those classes include: chemicals; paints; cosmetics; metal goods; machinery; hand tools; vehicles; jewelry; musical instruments; rubber goods; furniture; housewares; clothing; toys; foods; adverting and business; building construction and repair; telecommunications; transportation and storage; education and entertainment; hotels and restaurants; and computer, engineering, and legal services.
For each class in which you seek registration of a mark, the USPTO currently charges a fee of between $250 and $350, depending on the content of the application. That fee must be paid at the time the application is submitted.
Once your company has determined the desired classes, it must decide on a generic description of the goods/services for which your company wants to register the mark in each of those classes.
The USPTO also requires that the owner of the mark be identified, including in what state or country that owner is registered or organized (if an organization, and nearly every owner is).
Once the owner, mark, classes, and generic descriptions have been provided to me and any pre-filing legal concerns either of us has raised have been resolved, the typical charges by Michael Haynes PLC for preparing and filing the application are about $300-$400 per mark, plus about $100-$150 per class, plus the USPTO fee described above.
Proper use of a mark is essential to obtaining and preserving ownership of that mark. For details, request my “Guidelines for Proper Use of Marks” here.
Achieving registration requires submission of acceptable evidence (specimens) showing that the mark has been properly used in interstate commerce with the goods/services identified in the registration application.
For details, request my “Guidelines for Creating Acceptable Specimens of Use”
here.
Once registration is granted by the USPTO, your company may begin using the ® (R in a circle) designation with the mark. Until then, it is illegal to use the ® indicator, and instead your company may use the ™ indicator when the mark is used with goods and the ℠ indicator when used with services. If your company’s specimens present an indicator, it should be properly used.
To summarize the registration process:
Not to be confused with a trade secret, the trade dress of a product can be its source-indicating packaging, materials, configuration, design, decor, colors, and/or shape. For example, a soda bottle having certain hour-glass-like curves will be instantly recognized by most consumers as a COCA-COLA bottle. Likewise, the shapes, materials, and colors of certain smart phones instantly identifies them as iPhones from Apple. Similarly, a LIFE SAVERS candy can be recognized by its distinctive size and shape. Trade dress also can include the “look and feel” of certain user interfaces, such as websites and application icons.
Generally, trade dress discussions center on goods, though trade dress can also identify services. Examples include a restaurant chain’s exterior and/or interior design, menu, servers’ uniforms, and other distinctive features.
Because a product’s trade dress can serve as a source identifier for the product, that trade dress can be protectable as a type of mark under federal law. And just as with other types of marks, federal law seeks to protect consumers from trade dress that is likely to cause consumer confusion, and therefore can help consumers avoid mistakenly buying a product that is mimicking the trade dress of the product that the consumer really wanted to buy.
There are many advantages to registering a product’s trade dress with the USPTO. One of the significant registration requirements is that the trade dress be distinctive. To be legally protectable, trade dress must be:
Generally, trade dress is functional, and thus not registerable if:
To protect functional features of a good, consider a utility patent.
Evidence that a trade dress is functional can include:
The USPTO can require applicants to provide any such evidence of which they are aware.
If trade dress is a product design, it is registerable only if it has acquired distinctiveness.
If trade dress is a good’s packaging, it is registerable if it has inherent distinctiveness or acquired distinctiveness.
A good’s packaging is inherently distinctive if it naturally serves to identify the particular source of that good.
Factors that the USPTO often considers when trying to determine inherent distinctiveness include whether the trade dress is:
Goods have acquired distinctiveness when the public views the primary significance of the good’s packaging as identifying the source of the good rather than identifying the good itself. For example, the ornamental curves of a glass Coca-Cola® bottle identifies the source of the cola drink it contains (that is, the Coca-Cola Company) rather than only the fact that the package contains some unknown brand of cola.
Trade dress that is generic is not distinctive of a particular source and thus is not registerable.
Although relatively rarely attempted, if an applicant seeks to register its trade dress, the following must be submitted:
Trade dress drawings must:
While certainly not an easy task, obtaining federal registration can help better protect, potentially forever, your product’s distinctive and non-functional trade dress.
Few companies relish the idea of being threatened with a mark infringement lawsuit. And nearly all companies would greatly prefer to avoid fighting such a suit. Avoiding mark infringement suits starts with avoiding infringement. And fortunately, there are many paths to avoiding infringement, including:
I would be happy to assist with each of these activities.