|
Trademarks- Being able to associate a product or service with ® to designate a federally registered trademark is a strong business tool. Purchasing decisions are continually influenced by trademarks by distinguishing products from one another and indicating a level of authenticity and quality about products and services. The International Trademark Association (INTA) in their Top Ten Reasons Why You Should Care About Trademarks calls a Trademark the Most Efficient Commercial Tool Ever Devised. Merely Descriptive trademarks are not usually strong trademarks but there are descriptive trademarks such as Coca- Descriptive marks, often asserting geographical identity or nation- What is a Strong Trademark? Trademarks are any word, term, name, symbol, or device, or any combination thereof that are used in commerce as brand names, domain names, tag lines, slogans, non- Only non- Distinctiveness is the measure of the inherent strength of a mark( is it a weak or strong trademark?). An inherently distinctive trademark [as opposed to a descriptive or generic trademark] is a strong trademark. An inherently distinctive trademark may be registered on the USPTO Trademark Principal Register, qualifies for more protection under more federal, state and common law and is stronger for use in business to promote authenticity and for expanding product lines. The stronger the trademark the greater protection received from the courts. Nike, Inc. v. Just Did It Enterprises, 6 F.3d at 1231 (C.A.7 (Ill.), 1993) quoting Squirtco v. Seven- What is not a Strong Trademark? (What is a Weak Mark?) If a trademark is not inherently distinctive, such as a mark that is merely descriptive or generic, it is hard to protect from competitive use. The law does not allow trademark owners to take descriptive dictionary words and claim them for exclusive use (including geographically descriptive marks). See Examples of Strong Marks and Weak Marks. At best, a merely descriptive trademark may only potentially be registered on either the USPTO Federal Principal Register after 5 years of acquired distinctiveness (has achieved a secondary meaning) with the proper evidence or on the Supplemental Register. See Comparison for the advantages of federal registration and the differences between the two registrations. What is the definition of merely descriptive? A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b). A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1). Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966). See Examples of Merely Descriptive Trademarks. According to the USPTO (see merely descriptive refusals): The two major policy reasons for not protecting [allowing registration of] descriptive marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to avoid the possibility of costly infringement suits brought by the registrant. This thus enables businesses and competitors to have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (C.C.P.A. 1968); Armour & Co. v. Organon Inc., 245 F.2d 495, 114 USPQ 334, 337 (C.C.P.A. 1957); In re Styleclick.com Inc., 58 USPQ2d 1523, 1526- Surname Refusals Surnames are categorized as potentially being merely descrptive marks. How does the USPTO determine if a surname is common enough to be merely descriptive and issue a surname refusal? The census. See http://www.census.gov/genealogy/www/data/2000surnames/index.html for a list of the most common surnames. Is there anything worse than being merely descriptive? Being .Generic. Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial- Can my unregistered mark be merely descriptive or generic? An unregistered mark that is merely descriptive or generic may not actually be a trademark but just words or a trade name because it may not be legally protectable. Federal trademark infringement, 15 U.S.C. S 1114, and federal unfair competition, 15 U.S.C. S 1125(a)(1)(A), are measured by identical standards. “To prove either form of Lanham Act violation, a plaintiff must demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant's use of the mark to identify goods or services causes a likelihood of confusion.” A&H Sportswear v. Victoria's Secret Stores, 237 F.3d at 210 (3rd Cir., 2000). Claims for trademark infringement for registered or unregistered marks require findings that the marks owned by plaintiff are either inherently distinctive [rather than descriptive] or have acquired a secondary meaning and are likely to be confused with defendants' marks by members of the relevant public. Duncan Mcintosh Co. v. Newport Dunes Marina LLC, 324 F.Supp.2d 1083- In addition to distinctiveness, to be a valid mark, a mark applying for registration must actually function as a trademark.: Not everything that a party adopts and uses with the intent that it function as a trademark necessarily achieves this goal or is legally capable of doing so, and not everything that is recognized or associated with a party is necessarily a registrable trademark. As the Court of Customs and Patent Appeals observed in In re Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960): The Trademark Act is not an act to register words but to register trademarks. Before there can be registrability, there must be a trademark (or a service mark) and, unless words have been so used, they cannot qualify for registration. Words are not registrable merely because they do not happen to be descriptive of the goods or services with which they are associated.” Trademark Manual of Examining Procedure (TMEP) 1202. Also, an unregistered mark must actually have been used as a trademark [is a valid mark and functions as a mark] to be protected under trademark law. "[A] plaintiff must show that it has actually used the designation at issue as a trademark"; thus the designation or phrase must be used to "perform[ ] the trademark function of identifying the source of the merchandise to the customers." Microstrategy Incorp. v. Motorola, 245 F.3d at 341 (4th Cir., 2001) quoting Rock & Roll Hall of Fame v. Gentile Prods., 134 F.3d 749, 753 (6th Cir. 1998). See Valid and Invalid Uses of Words, Number, Symbols, etc. as Trademarks. Secondary Meaning Secondary meaning is when the consuming public has made a link between an alleged mark and the source of the mark. The factors considered in determining whether a descriptive mark (not inherently distinctive) has achieved secondary meaning include: (1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer as evidenced by survey or direct consumer testimony; (2) the degree and manner of advertising under the claimed trademark; (3) the length and manner of use of the claimed trademark; and (4) whether use of the claimed trademark has been exclusive. Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1358 (9th Cir.1985). Evidence of Secondary Meaning or Acquired Distinctiveness Evidence of secondary meaning or acquired distinctiveness may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and any other evidence that establishes the distinctiveness of the mark as an indicator of source. See 37 C.F.R. §2.41(a); In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq. The United States Patent and Trademark Office decides each case on its own merits- The Broadest Protection Format for Trademarks For the broadest protection, the standard character format should be used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element. Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation. The stylized or design format, on the other hand, is appropriate if you wish to register a mark with a design element or word(s) or letter(s) having a particular stylized appearance that you wish to protect. The two types of mark formats cannot be mixed in one mark. A distinctive stylized format may also be registrable when the standard character format of the same word(s) cannot be registered on their own where the distinctiveness of the mark is obtained from the design rather than the word(s). Types of Registrations (mark categories)
Types of Marks- Usual Types of Trademarks:
Unusual Types of Trademarks:
Creation of a Mark That is Inherently Distinctive Rather Than Merely Descriptive When creating trademarks, one essential requirement in order to be registrable on the USPTO Trademark Principal Register is that the trademark is distinctive. What is a distinctive name for the purposes of obtaining a trademark from the United States Patent and Trademark Office (USPTO) is found in the Trademark Manual of Examining Procedure (TMEP) in Section 1209.01. Distinctiveness is the opposite of descriptiveness for trademark purposes. The distinctiveness of trademarks varies along a continuum (often depending on use) from being highly distinctive (or inherently distinctive) to being merely descriptive or generic. Highly distinctive marks that are arbitrary, fanciful or suggestive are registrable on the USPTO Trademark Principal Register. Marks that are merely descriptive matter may potentially be considered to be registered on the Principal Register if they have acquired distinctiveness with Secondary Meaning (must be proven with evidence and at least 5 years of use). Generic marks (common or class names for goods or services) are not registrable as trademarks under either the Principal or Supplemental Register. Composite marks, mark that are partly descriptive or generic and partly suggestive, arbitrary or fanciful, may be registrable on the Principal Register with the descriptive or generic part disclaimed for exclusive use. The terms are further defined in TMEP 1209.01: “Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, EXXON) or are completely out of common usage (e.g., FLIVVER).” “Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey).” “A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services.” “Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services.” “Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. . . .Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. Therefore, a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable.”
|
|
|
Federal USPTO Trademark Registration There are many statutory advantages of Federal Registration for trademarks on the Principal Register above and beyond those provided by common law including:
A few of these advantages apply for marks on the Supplemental Register as well. See Comparison of Principal Register with Supplemental Register for more information. |
|
|
Verify Whether Your Claimed Trademark Is A Strong Trademark 1. Verify Inherent Strength Does each trademark consist of inherently distinctive element(s) that can be claimed for exclusive use? Marks that are merely descriptive (or worse, generic) are hard to register and hard to protect. Section 2(e) refusals are very common refusals. Whether a trademark is merely descriptive depends on the goods and services description. 2. Verify Right to Use Does the trademark have a likelihood of confusion with prior- Section 2(d) refusals are very common refusals. 3. Verify Right to Register Does the trademark meet the USPTO rules of registration? (Does not have any grounds for refusal?) 4. Verify Specimen Is the trademark used as a trademark or service mark in the specimen? Specimen refusals are very common refusals. The right type of specimen for any particular application depends on what the goods or services are. 5. Verify Goods and Services ID Is the goods/services identification definite and accurate? Is the goods/service ID as broad as it should be under the circumstances or will a narrower description distinguish it better? ID refusals are common too but getting the right description identifies the scope of protection. Too narrow of a description can yield narrow rights. Too broad of a description can result in an unnecessary likelihood of confusion with someone else. Go Beyond Just Trademarkable To A Strong Mark
These are all good questions to consider before adopting a trademark for use because if you are planning to succeed, it may be a good idea to be able to work that plan rather than abandoning it. [The abandonment rate of trademark applications at the USPTO (trademarks that did not issue) is very high, about half of applications never register.] All of the above questions involve fact- Not Just Patents ® and Aim Higher® are federally registered trademarks of Not Just Patents LLC for Legal Services. |
MerelyDescriptive.com
Trademark application
help