TRADEMARK REFERENCE BOOK
What is a Trademark or Service Mark
A trademark or service
mark is a word, slogan, symbol or design (or combination of these) used by a
business to identify its goods or services and distinguish it from other
businesses. The names and logo designs that a company is using or is planning
to use are extremely valuable assets that need to be protected. In the business
world, the name of a successful product or service contributes greatly to its
real worth. Who among us cannot instantly identify with legendary marks such as
McDonald's® for burgers, FedEx® for overnight shipping services or Microsoft®
for computer software. Ultimately, a successful product or service is
synonymous with a strong, memorable identity.
What Can Be Registered
Things you should know
about the kinds of marks, what their relative value is, and their advantages
and disadvantages in marketing.
When creating names or
logos for companies, products and services, it's important to consider the
strength and long-term value of a mark. Once a search has been performed and it
has been determined that no one is using or has registered the same or a
confusingly similar mark, the next step is to officially register it as a
trademark or service mark.
In general, marks that
are "inherently distinctive" (strong), or have acquired
distinctiveness over a period of time, are registrable. The strength of a mark
has an enormous impact on whether the mark will be registered. The U.S. Patent
and Trademark Office ("USPTO") recognizes two types of registered
marks, "distinctive" and "non-distinctive", which go into
either the Principal Register or the Supplemental Register, respectively. The
Principal Register is where you want to be. That means you have trademark
protection and are reasonably safe from having anyone else challenge your mark.
If properly maintained, a registration lasts for ten years and can be renewed
for periods of ten years.
The Supplemental Register
is a kind of "trademark purgatory." It does not offer the owner any
of the protections that accompany marks on the Principal Register. Rather, it
only provides notice to would-be users of the mark that it is already in use. A
Supplemental Register registration, if properly maintained, also lasts for ten
years and can be renewed for periods of ten years. After a mark remains on the
Supplemental Register for five years, the owner can petition to move it to the
highly-desirable Principal Register. However, if the mark has become
distinctive of the goods or services any time during the period of
registration, the owner can petition to have it moved to the Principal
Register.
Kinds of Trademarks and
Service Marks
Trademarks come in four
varieties: 1. Descriptive, 2. Suggestive, 3. Arbitrary and 4. Fanciful. Each
has its particular advantages and disadvantages with regard to trademark
protection and ease of marketing.
Descriptive Marks
Descriptive marks are the
easiest to market but the hardest to register. A descriptive mark is one that
says exactly what the product is. In general, any mark that describes a
quality, characteristic, ingredient, purpose, function, etc. of the product or
service is descriptive. Other descriptive marks can be geographic, laudatory or
personal surname words. All of these are considered weak marks. The USPTO feels
that a product description is not a mark because it describes all other
competing products too.
Please note, however, a
descriptive mark can be registered if the mark through continuous and
substantial use has acquired distinctiveness through consumer recognition or
"secondary meaning."
Suggestive Marks
Suggestive marks are a
bit easier to register and a bit harder to market. If information about the
product or service given by the mark is indirect or vague, then this indicates
that the mark being used is "suggestive." An example would be
"Bravo®." While this mark does not explicitly describe what the
underlying goods or services are, it hints at it. You may suspect that it has
something to do with the performing arts, but you don't know if the mark is for
a channel, a theater or a magazine. A name like this requires a leap of
imagination and necessitates a little education to explain to consumers what it
is. Sometimes a sub-title helps, as in "Bravo-the culture channel."
Since the word is suggestive you have a better chance of getting it on the
Principal Register than if it was an exact description. Other examples of
suggestive marks are Greyhound® for buses and Sunkist® for oranges.
Arbitrary Marks
Arbitrary marks are
common English words that are used in a way that their normal meaning has
nothing at all to do with the product or service. They are relatively easy to
register and relatively hard to market. (See how there is an inverse
relationship
between trademarks and marketing? The easier it is to register the trademark,
the harder it is to tell consumers what the product is. And the easier it is to
market it, the harder it is to prove the trademark is unique.)
"Nickelodeon®" is an example of an Arbitrary mark. It's a fun,
silly-sounding word but the actual meaning is "a five-cent movie
theater," which doesn't have anything to do with children or cable
television or green slime. But, it has been so well-marketed that now
"Nickelodeon" means "kids." This required much effort and
many dollars in advertising to establish. But once established, the mark became
very valuable property. In other words, the more money invested in giving
meaning to an Arbitrary mark, the more value it has in the long run.
Arbitrary marks are easy
to register because the words have no connection to the product. A five-cent
movie theater might have a hard time registering "Nickelodeon," but
not a TV network. "Apple® Computers" is another good example. Since
apples and computers have no connection, it is a strong, defensible mark that
has gained recognition value with consumers over the years. A fruit company
named "Apple" would have a very tough time.
Fanciful Marks
The final category is
Fanciful, which is the easiest to register and the hardest to market. Fanciful
marks are coined words that never existed before. They do not exist in any
dictionary and are completely made up. A classic example is "Oreo®."
This name has nothing to do with chocolate sandwich cookies, or anything else
for that matter, because somebody simply invented the word. (It exists in the
dictionary only as a slang word derived from the Nabisco trademark.) The Oreo
trademark is so strong it has almost become an icon. Everyone knows what an
Oreo is, thanks to decades of advertising and marketing. And, the mark is
un-challengeable.
Choosing A Mark
Depending on how
important it is to a company to have a strong mark, or how much time and money
they are willing to invest in educating the public in their marketing efforts,
they can decide whether their new name should be Descriptive, Suggestive,
Arbitrary or Fanciful. In the short term, Descriptive is better because it
starts selling right away. But remember, it cannot be registered absent a
showing of secondary meaning. If the product has longevity, and the company
wants it to be around a long time, and can wait a while until the public
catches on, then Fanciful is the best bet. But, Fanciful marks have the
disadvantage of being expensive to establish and require lots of start-up
advertising. The choice is up to the owner of the company, product or service.
Do You Need Protection?
Your product, service
name or logo could be your most valuable asset as well as your most vulnerable
one, if you do not take the proper steps to insure its protection. If you have
developed a distinctive mark for use in interstate commerce (this includes the
World Wide Web), it may be eligible for registration.
How to Get
Started
Trademark Searching
Recent cases in the
federal courts have emphasized the obligation to conduct a trademark search,
investigation and clearance check. The American Trademark Company, Inc. can
conduct a thorough search of state and federal registers as well as common law
sources such as, trade journals, business directories, yellow pages
directories, Internet domain name registrations including several other sources
(foreign databases can also be searched if you wish to register a mark outside
the U.S. ). Based on the results obtained, The American Trademark Company, Inc.
can provide you with an opinion rendered by a qualified trademark attorney
which will explain the availability of your proposed mark.
Why a Qualified
Trademark Attorney Should Review Your Search Results
After a search has been
conducted, it must be emphasized that it is impossible to establish your right
to use and register a mark based solely on the fact that there is no
"exact match" for your mark. Determining whether a trademark or
service mark is available for you to use is substantially different from
determining whether a corporate name is available for you to use and
incorporate with the Secretary of the State's office in a particular state.
There are no similarities between the two evaluations.
It is strongly
recommended that a licensed trademark attorney review your search results
before you begin to use and apply to register a mark. There are many nuances in
U.S. Trademark law that an untrained eye would not be aware of, things that
could impede your use and registration of a trademark.
The following are a few
examples of just some of the many things that are considered by trademark
attorneys when reviewing a search report in order to determine whether a
proposed mark is available for use and registration.
EXAMPLES:
1. Is the proposed mark phonetically
similar to another, i.e., does it sound the same to the ear, even though it is
different in visual appearance? The following are real examples of marks that
were held to be confusingly similar to pre-existing registered marks based on
phonetic similarities (citations have been omitted):
CUP-O'-COLA was held to
be confusingly similar to COCA COLA
BONAMINE was held to be
confusingly similar to DRAMAMINE
SARNOFF was held to be
confusingly similar to SMIRNOFF
COCA TAN was held to be
confusingly similar to COPPER TAN
2. Is the proposed mark
similar in meaning to another mark even though the two marks are visually
different? Once again, the following are real examples of marks that were held
to be confusingly similar to pre-existing registered marks based on similarity
in meaning (citations have been omitted):
SMOG for raincoats was
held to be confusingly similar to LONDON FOG for raincoats
BRUTUS for men's wearing
apparel was held to be confusingly similar to BRUT for men's after-shave and
toiletries
TUNA O' THE FARM for
canned chicken was held to be confusingly similar to CHICKEN OF THE SEA for
canned tuna
PROMISE for furniture
polish was held to be confusingly similar to PLEDGE for furniture polish
3. Is the proposed mark
in a such a form that it could be mistaken as being part of a larger family of
marks? Sometimes a trademark owner may use the same prefix, suffix or syllable
so much so that it becomes prominent in the minds of consumers who associate
all marks with the same prefix, suffix or syllable with that particular
trademark owner. A good example of this is the McDonald's® family of marks
which incorporate the prefix's MC or MAC on its products, such as, EGG
MCMUFFIN, CHICKEN MCNUGGETS, MCLEAN DELUXE, etc. Therefore, if someone were to
propose the mark MCPASTRY for a line of baked goods, chances are they would be
prevented from using such a mark.
Please note there are
many other factors that must be addressed when reviewing a trademark search
report. Please consult a qualified trademark attorney when evaluating the
availability of your mark or call The American Trademark Company, Inc. for more
information on this subject.
Trademark Application Filing
The U.S. Application
process is not as simple as it seems and it usually takes a year or more to
complete.
Trademark Review and Prosecution Phase
Many applicants are unaware
that filing the application is only the beginning of the process which is
commonly known as "trademark prosecution." This process involves the
examination of the application by an Examining Attorney at the U.S.P.T.O.,
written communication between the U.S.P.T.O. and applicant (or applicant's
attorney), possible negotiations, and the filing of legal documents or written
arguments in order to advance the application to registration. Failure to file
a proper and timely response could result in the unintentional abandonment of
an application. An experienced trademark practitioner is experienced in the
proper preparation and filing of an application and is qualified to prepare the
correct written responses during trademark prosecution. The American Trademark
Company has qualified trademark attorneys to help you through this process.
Foreign Trademark Application Filing
When applying for a U.S.
registration, consideration should be given to international marketing plans
and whether the trademark will be used in foreign countries.
International trademark
rights are country specific. In some countries, rights to a trademark are
obtained by "using" the trademark in that country. In other
countries, rights are obtained by just being the first to file an application
for a particular mark in that country. Thus, the countries to be most concerned
with are the "first to file" countries which would allow anyone to
come in and file a trademark application and get rights to your mark. Some of
these countries are:
Afghanistan, African
Union, Algeria, Argentina, Austria, Bahrain, Barbados, Benelux (Belgium,
Netherlands & Luxembourg), Bolivia, Brazil, Bulgaria, Chile, China (PRC),
Colombia, Costa Rica, Cuba, Czech, Denmark, Djibouti, Dominican Republic,
Ecuador, Egypt, El Salvador, Finland, France, Germany, Greece, Guatemala,
Guinea, Honduras, Hungary, Iceland, Iran, Italy, Japan, Korea (North &
South), Kuwait, Latvia, Lebanon, Lesotho, Liberia, Libya, Lithuania, Mexico,
Mongolia, Morocco Tangier Zone, Nepal, Nicaragua, Norway, Oman, Paraguay, Peru,
Poland, Portugal, Qatar, Romania, Saudi Arabia, Somalia, Spain, Sri Lanka,
Sudan, Sweden, Syria, Taiwan, Togo, Turkey, United Arab Emirates, Uruguay,
Venezuela, Vietnam, Yemen and Zaire.
Please note that there
are certain treaties to which the United States is a member. These treaties
allow members to file a trademark application in member countries and obtain
certain priority benefits. For instance, under the European Community Trademark
(CTM), and the International Registration (IR) filing system.
European Community Trademark Application
While getting a
registration in a foreign country generally requires that a separate
application be made in the individual country, this one blanket application can
save you time and money and covers all the countries of the European Community,
namely, Austria, Bulgaria, Belgium, Czech Republic, Cyprus, Denmark, Estonia,
Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania,
Luxembourg, Malta, The Netherlands, Poland, Portugal, Romania, Slovakia,
Slovenia, Spain, Sweden and United Kingdom.
Madrid Protocol International Trademark
Application
Since the US joined the
Madrid Protocol in 2003, one application can be made to the US Patent &
Trademark Office for individuals or legal entities that are nationals of, are
domiciled in, or have a real commercial establishment in a country that is a
Member of the Madrid Protocol. Prior to the US joining the Madrid Protocol
getting a registration in a foreign country required a separate application in
the individual country. Under a Madrid Protocol Application, only one
blanket application needs to be filed. However, unlike the European
Community Trademark Application, this application filing will only cover those
countries that the applicant chooses.
As of November of 2007,
the following countries are members of the Madrid Protocol: Albania ,
Algeria , Antigua and Barbuda , Armenia, Australia, Austria, Azerbaijan,
Bahrain, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Botswana , Bulgaria,
China, Croatia, Cuba, Cyprus, Czech Republic, Democratic People's Republic of
Korea, Denmark, Egypt, Estonia, European Community, Finland, France, Georgia,
Germany, Greece, Hungary, Iceland, Iran (Islamic Republic of), Ireland, Italy,
Japan, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein,
Lithuania, Luxembourg, Moldova, Monaco, Mongolia, Montenegro, Morocco,
Mozambique, Namibia, Netherlands, Norway, Oman, Poland, Portugal, Republic of
Korea, Romania, Russian Federation, San Marino, Serbia, Sierra Leone,
Singapore, Slovakia, Slovenia, Spain, Sudan, Swaziland, Sweden, Switzerland,
Syrian Arab Republic, Tajikistan, The former Yugoslav Republic of Macedonia,
Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America,
Uzbekistan, Viet Nam, and, Zambia.
Factors to Consider Before Filing a
Foreign Application
1. Is the mark currently
in use or intended to be used in a "first to register" country
whereby another party could simply register and obtain exclusive rights to the
mark;
2. Where are sales most
likely to occur initially in substantial volume, including export territories
of licensees;
3. Where would you most
likely want to prevent competition from using the mark;
4. Is the trademark a
type that might be appropriated by a pirate in a high risk piracy country such
as Korea , Taiwan , Singapore , China , Panama or Japan ?
5. Will sales warrant the
filing expenses if only limited amounts of exports are involved?
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General Guide to Proper Trademark and
Service Mark Usage
The following sets out
some fundamentals concerning trademark and service marks and a list of
"do's" and "don'ts" for proper trademark and service mark
usage. In general, the rules are the same for both trademarks and service
marks. Incorrect usage can be a significant factor in causing a mark to lose
its protected status and become freely available for use by all.
What Constitutes Trademark Use
"Use" of a
trademark means selling or offering for sale goods on which, or in close
physical proximity to which, the trademark is disposed; for example, use of the
trademark imprinted or embossed on the goods themselves or on packages or
labels for the goods. Use of the mark in advertising, letterhead, shipping
documents, or the like, is not a trademark use for tangible goods. Generally,
the trademark must be on the goods themselves, or on containers, packages or
labels for the goods.
What Constitutes
Trademark "Use in Commerce"
Any shipment of goods
bearing the trademark across a state line in the normal course of business
satisfies the "use in commerce" requirement. Token sales made solely
to establish trademark use do not constitute legally sufficient
"use." Invoices or other documents showing the initial shipment of
the trademarked goods to out-of-state customers (first "use in
commerce") should be preserved.
What Constitutes Service
Mark Use
"Use" of a
service mark means directly associating the mark with the underlying services,
for example, in print, radio, television or electronic advertising on the World
Wide Web. Merely including the mark in printed materials concerning the
services without specifically using the mark as an identifier of the source of
the services is insufficient to engender rights in the mark.
What Constitutes Service
Mark "Use in Commerce"
It is not necessary to
have branch offices in different states in order to supply services in
interstate commerce. Thus, a single location within a state which caters to
persons who come to it from another state qualifies as interstate commerce.
Clearly, hotels, retail department stores, restaurants and the like, fall into
such a category, but so do many other businesses, if it can be shown that at
least part of their clientele is from out-of-state. Utilization of the service
mark in print, radio, TV or World Wide Web advertisements which reach
out-of-state audiences is helpful in establishing the existence of an
interstate clientele. In particular, print advertisements in out-of-state
publications may conveniently be submitted to the U.S. Patent and Trademark
Office as evidence of solicitation of interstate business. In addition, it is
useful to retain copies of representative out-of-state purchase orders as
evidence of servicing interstate commerce.
Use of Marks in Advertising, Text,
Brochures, Articles, etc.
Always use the mark as a
proper adjective to modify a noun which is a generic word for the goods or
services with which the mark is associated.
Never use the mark as a
noun in a sentence:
EXAMPLE:
Correct:
"ACME white bread
tastes great and can be used as a bonding agent."
Incorrect:
"ACME tastes great
and can be used as a bonding agent."
Use a superscript TM for
unregistered trademarks and a superscript "SM" for unregistered
service marks. Use the symbol "®" only for trademarks or service
marks for which federal registrations have been granted, not merely applied
for.
It is not necessary to use
the trademark or service mark symbols TM, "SM", or "®" for
each repeated use of the mark on a given page, article or advertisement, but
the symbol should be used on the first or most prominent use of the mark. If it
is desired to not use the symbols at all, they may be replaced by a short
statement, e.g., in the form of a footnote, declaring the trademark or service
mark status.
EXAMPLE:
Correct use for an unregistered
trademark:
"ACME is a trademark
of the Flour Power Company for its line of breads and baked goods."
Correct use for a registered trademark:
"ACME is a
registered trademark of the Flour Power Company for its line of breads and
baked goods."
Always print the
trademark or service mark in a type style (all caps, underlined, italics, etc.)
which is different from that of the surrounding text or, at the very least,
capitalize the trademark.
Never punctuate or
pluralize the trademark.
EXAMPLE
Correct:
The outstanding feature
of ACME white bread is that it sticks to most surfaces.
Incorrect:
ACME's outstanding
feature is that it sticks to most surfaces.
Do not employ variations
of the same mark, be absolutely consistent in rendering the mark.
Avoid phraseology which
implies that the trademark is other than a unique indicator of the source of
the goods or services. The difficulty with the following incorrect example is
that it may be construed to imply that there is one ACME line owned by the
Flour Power Company and another ACME line owned by someone else.
EXAMPLE
Correct: ACME breads and baked goods which
are supplied exclusively by the Flour Power Company, have been enthusiastically
received by plumbers.
Incorrect: The Flour Power Company's ACME
breads and baked goods have been enthusiastically received by plumbers.
A licensed trademark
attorney should review your advertising copy before it is submitted for
publication or printing.
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Trademark Registration Maintenance
Once a trademark is
registered not only is it important to use it properly, but there are also
important deadlines that come at various intervals during the life of a
registration. Between the 5th and 6th year of
registration, a registrant must file a Declaration of Use to keep the
registration alive for the remainder of its 10-year registration period.
Failure to do so will result in the cancellation of the registration. At
this time, a registrant can also file a combined Declaration of
Incontestability provided that the mark has not been challenged since the time
of registration. This filing will make the registration unchallengeable.
Finally, in the 10th year of registration, an application for 10
year renewal will need to be filed.
We thank you for
considering The American Trademark Company for quality and affordable service
for all your trademark/service mark clearance and registration needs.
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American Trademark Company, Inc.
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