21 Things About Trademarks That Every Business and Marketing Person Should Know

There’s an old comedy bit where the comic offers to teach you “everything you’re going to remember from college, ten years after graduation.”  The crash course is offered at a hefty price, but much less than four years of actual college tuition.  There’s a little of that in what we’re going to discuss here today, except for the hefty price of course.

Once you absorb all the knowledge in this article, people will come from miles around to meet you and marvel at your Giant Trademark Brain. And the Law of Averages says that some percentage of them will buy your product, too.

In more than 20 years of advising business owners in the area of trademark law, I’ve noticed many little tidbits of knowledge that I find myself passing along to client after client.  These are things that most business owners and marketing people either don’t know at all or have enduring misunderstandings about. 

Each of these nuggets of information, standing by itself, is not very impressive – but knowing all of them will really increase your comprehension of the trademark process.  For that reason, I have decided to present them all in one place.  So gird your loins and get ready for a crash course in trademark knowledge.

Thing 1:  Trademark rights are created by use of the mark on your goods or services.  Registration of your mark is an important way to increase and extend those rights.

Thing 2:  There is no functional difference between “trademarks” and “service marks” – trademarks identify goods (for example, BUDWEISER® for beer) and service marks identify… that’s right, services (e.g., HOLIDAY INN® for hotel services.)  So for the rest of this post, let’s simplify things by calling them all trademarks, or just marks.

Thing 3:  You don’t register a trademark for “everything,” you register it for specifically identified goods and/or services that are spelled out in your application.  The more types of “things” you want to cover, the more you’ll pay in filing fees for the application.

Thing 4:  Give a lot of thought to what goods/services you want to cover before filing your trademark application, because once the application is filed you cannot broaden its coverage (you can only narrow it, by taking things out.)

Thing 5:  New trademark applications literally are filed every minute at the U.S. Patent and Trademark Office.  Once you decide on a mark and goods/services, file your application as soon as possible to minimize the chances that someone else will “beat you to the punch.”

Thing 6:  No, you cannot file a trademark application or keep alive a registration for a mark you have no current intention of using, just to “keep people away from it.”

Thing 7:  The designations ^TM and ^SM that you see everywhere really have no official significance.  They are used unofficially, to indicate that the user regards the name as proprietary.

Thing 8:  You may not use the ® symbol with your mark until your mark is actually registered (not just filed.)  After the registration issues, you should always use it at least once on every package, advertisement, marketing piece, etc.

Thing 9:  You should always search a new product name (the earlier the better) before committing to it or using it.  Not doing so is a dare to the Trademark Infringement Gods.

Thing 10:  Because trademark rights arise from use (see Thing 1 above), trademark searching is an art and not a science.  When searching for potential users of conflicting marks in the vast universe of information out there, you have to choose some logical place to stop.  Always remember that, for these reasons, no trademark search is perfect – just the best search reasonably feasible at the time it’s conducted.

Thing 11:  Minor differences in spelling and inventive spellings won’t make an otherwise infringing mark “safe” to use or register.

Thing 12:  In a similar vein, you probably attach a much greater significance to small product differences within your industry than the general public (or a judge) will.  This means that when comparing products to determine whether you infringe someone else’s mark, the judge is not going to be swayed by the argument that “no one could be confused because the products are totally different – theirs is a 6-pin device and ours is an 8-pin device!”

Thing 13:  When choosing a new name, remember that the more closely it describes the product (or some feature or function of it), the more likely you are to have problems with availability and/or protection.  I could give you a half hour on why, but just trust me on this.  You’re much better off picking a name that is not descriptive.

Thing 14:  Word mark registrations are inherently more flexible than logo/design marks, because use of a registered word mark as a part of your logo is covered by the registration.  The reverse is not true.

Thing 15:  Because of Thing 14, when first starting down the registration path (and anytime cost/budget is a large factor), it’s usually advisable to register the word form of your mark first and register the logo version when finances allow.

Thing 16:  It can take many months for an application to mature into a trademark registration, but there’s no reason to hold off on using the mark in the meantime.  Quite the opposite, in fact – usually you’re better off starting use as soon as possible.

Thing 17:  The time to think about whether your new name will actually be available for you to use is as soon as possible.  Yesterday, if possible.  A month ago, better yet.  Leaving that issue until the last minute invites bad decision-making and disaster.

Thing 18:  Most trademark infringement disputes are resolved through negotiation before any suit is filed, usually with the “junior user” being provided some time period to shift over to a new name.  But don’t take this as an excuse to go forward with a name you know is questionable, because the first sentence often doesn’t apply where the infringement appears intentional.  In those cases, the aggrieved party may go straight to court.

Thing 19:  Using or registering your new name as a domain name does not create trademark rights, unless you use that domain name in a trademark-like way on your website. 

Thing 20:  Similarly, merely registering your corporate name with your state’s secretary of state does not create any trademark rights or constitute any type of government approval for you to use the name as a trademark.

Thing 21:  In the trademark world, as elsewhere, what goes around comes around.  Don’t try to nestle up to a competitor by using a similar mark.  You wouldn’t want anyone doing that to you.  Don’t make me be your mom on this – Golden Rule, and all that.

This is not, of course, intended as a complete list.  Hopefully it is helpful, though.  If I get good response on this article, I’ll think up some more bits of important knowledge.  And then, dear reader, together we can venture down the uncertain path of the sequel.

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How to Choose Your New Brand – Part 11

Choosing a new brand name is not as simple as “Do I like it? Okay, let’s go with it!”  Whether it is to be your flagship brand or just a new product or service in your line, there are many factors to consider in choosing a new brand name.  In this post and the others in this series, I walk you through the most important of those steps.

My earlier posts in this series discussed the importance of getting good legal advice, of understanding the function of trademarks, and of deciding whether your marketing plans require exclusivity on the name.   I also have discussed the strategic value of coming up with a list of potential name candidates and of having your name candidates consumer tested and searched for potential conflicts.

My more recent posts discussed the value of filing trademark applications and registering appropriate domain names to reserve your narrowed list of name candidates.  The most recent installment discussed two steps: brand rollout and monitoring the marketplace for infringements.

We now come to the final step on my list: maintaining your trademark and domain name registrations, so that they do not expire or get cancelled. 

Failing to plan ahead for renewals is asking for disaster.

Step 11:  Maintain and Renew Registrations For Your Name

If you have gone to the cost and effort to stake out trademark and domain name registrations for your brand name, it only makes sense that you will want to keep them in place.  These registrations provide you with important safeguards against encroachment by competitors.  You should make concrete plans now, at the time of brand rollout, to take the necessary maintenance steps. 

Trademark Renewal

Unlike some other types of intellectual property protection, trademark rights can last forever provided you make continuous use of your marks and enforce them against infringers.  Trademark registrations also can be perpetual, but you must take the necessary steps to keep those registrations in force.

If you want to keep your U.S. Trademark Registration alive, you must make periodic filings with the USPTO to prove that the mark in question is still in use (and still used in the same form as it was registered.)  If you don’t make these filings, depending on the point in your registration’s life, it will be cancelled automatically or simply expire.  Your trademark practitioner can assist you in making the necessary filings on a timely basis, but ultimately it’s up to you to make certain the mark remains in ongoing use and that the registration is maintained.

Cancellation or expiration of your trademark registration doesn’t mean you lose all rights in your mark.  If the mark has been in continuous use on your product and remains in use, you still will have common law rights.  But the protections you can leverage using common law rights are far inferior to those provided by a U.S. Trademark Registration.  If the U.S. Registration for your mark expires or is cancelled, my best advice is to file a new application to register the mark as soon as possible. 

Domain Name Renewal

As with trademarks, domain name registrations cover a fixed period of time and will eventually “die” if you fail to renew them.  (One important difference is that with domain names, you can determine the length of your registration and pay registration fees accordingly; with trademarks the maintenance and renewal periods are fixed and uniform.)

If you build your brand into a valuable commodity, then the corresponding domain name will be an equally valuable piece of property.  You can bet there will be opportunistic parties waiting around for you to fall asleep at the switch and let your valuable domain registration die.  Indeed, there is an entire industry built around “snatching” expired domain names. 

Make certain SOMEBODY in your organization stays alert to upcoming renewal and maintenance deadlines.

Your Assets, Your Responsibility

You should create within your brand organization a job function responsible for calendaring, tracking and renewing trademark and domain name registrations.  Because these events often take place years in the future, this responsibility should be bestowed on a particular job title, not a particular person.  Individual people may come and go, but job titles (and their responsibilities) remain.

You can in many cases outsource these responsibilities, but I recommend keeping your own calendar of upcoming renewals as well.  Bear in mind that if someone else fails to take the necessary actions, you are the one who will feel the loss of rights.  Any law suit you could bring against your failed “watchman” would be small comfort – money damages are a poor substitute for the value of your lost rights.  Ultimately, these are your assets and you should assume ultimate responsibility for keeping them safely registered.

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How to Choose Your New Brand – Part 7

Choosing a new brand name is not as simple as “Do I like it? Okay, let’s go with it!”  Whether it is to be your flagship brand or just a new product or service in your line, there are many factors to consider in choosing a new brand name.  In this post and the others in this series, I walk you through the most important of those steps.

My earlier posts in this series discussed the importance of getting good legal advice, of understanding the function of trademarks, and of deciding whether your marketing plans require exclusivity on the name.   I also have discussed the strategic value of coming up with a list of potential name candidates and of having your name candidates consumer tested and searched for potential conflicts.

The next step is an important one, because it helps to reserve your narrowed list of candidates for your use once a decision is made.

Be prepared... file early with the feds.

Step 7:  File Trademark Applications to Protect Your New Brand

Filing one or more trademark applications to protect your new brand is an important part of the process.  You can use a mark and even develop limited rights in it on an unregistered basis, of course.  But the breadth of your rights, and your ability to enforce those rights, increase greatly when your mark is registered with the U.S. Patent and Trademark Office.  (State trademark registrations, while cheaper, usually offer little or no actual protection and thus I usually do not recommend them.)

If you have a logo version of your mark, you should strongly consider filing applications to register both the “word” version and the “logo” version.  Registering only the logo version will only cover the brand when used in that specific (basically, that identical) logo version.  We all know that logos have a way of changing over time, and you run the risk that eventually your registration no longer will cover the “evolved” logo.  The “word” registration will cover your mark in any format, including in any graphic logo format.  By registering the word format also you ensure that you will have consistent coverage of the brand, even if you eventually need to register a new logo version.

ITU Applications Let You File Early

You can file applications to register your new brand on a so-called “intent-to-use” basis, which I compare to taking a number for service at the deli counter.  Such “ITU” applications can be filed as long as you have a bona fide intent to use the mark. 

By filing an ITU application, your priority is locked-in so that your rights will be superior to those of others who may file or even begin use after you.  You will need to begin actual use of the mark before the actual trademark registration can issue, but an ITU application lets you get your foot in the door, as it were.

File For Several Candidates, Just in Case

It’s not unusual for a company to file applications covering several of potential name candidates relatively early in the name selection process, and then let the applications for the “losing” candidates go abandoned once a final selection is made.  This allows the applicant to get the earliest possible priority date by filing the applications early, and still hedge its bets on the final choice.  Generally the “bona fide intent to use” requirement is regarded as satisfied if the applicant has a demonstrable intent to use the mark as one of a relatively limited number of alternatives.

Registering your trademark with the USPTO effectively “reserves” the entire country for you to expand your use, even if you haven’t yet reached national distribution.  Registered marks also appear more prominently in availability searches conducted by other attorneys, so your registration will serve as a strong discouragement to others adopting confusingly similar marks.  Owning a registration for your mark usually makes it easier to litigate and to prevail against an infringer, should a challenge become necessary.

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How to Choose Your New Brand – Part 4

Choosing a new brand name is not as simple as “Do I like it? Okay, let’s go with it!”  Whether it is to be your flagship brand or just a new product or service in your line, there are many factors to consider in choosing a new brand name.  In this post and the others in this series, I am walking you through the most important of those factors.

In my earlier posts in this series, I discussed the importance of getting good legal advice, of understanding the function of trademarks, and of deciding whether your marketing plans require exclusivity on the name.   The next step is less conceptual and more practical in nature: 

"I only chose ONE name candidate!"

Step 4:  Choose Several Potential Trademarks That Fit Your Branding and Marketing Objectives

Once you have sorted out the previous steps, you can use the conclusions you’ve draw to begin selecting potential brand names that fit your branding and marketing objectives.  This is the fun part! 

It’s best to choose a list of several names that would be acceptable, and try to avoid becoming too attached to any one name.  It is a good idea to rank the names in terms of your preference, however.

Why is choosing several candidates a good idea?  Simply put, it can save you time and heartache in the brand clearance process.

You should be planning to subject your brand name candidate(s) to a number of evaluations.  For instance, you may want to test your proposed brand with consumers.  If you plan to market internationally, you may want to get international reaction to the brand.  If nothing else, you absolutely should have your brand name searched by experienced attorney, to make certain it is available for your use and (hopefully) registrable with the U.S. Patent and Trademark Office. 

A brand name candidate may drop out of contention for a number of reasons.  A name may turn out to be unavailable, it may be unregistrable, may not play well with consumers, or may even have an unintended significance as regards your product or service.  (I once saw a name candidate for a major international brand get far, far down the approval process before someone realized that in the UK, the word was a slang term for what our British friends might call “an unsavoury sexual practice.”)

Obviously, this evaluation and searching process takes time – something that often comes into short supply as you move down the path towards your brand launch.  If you tie yourself to only one name, you may find it unavailable and have to start over from the beginning.  If you have chosen several candidates and run your evaluation tracks simultaneously, you are much more likely to end up with a viable candidate and take the shortest amount of time to do so.

If you have ranked your candidates in order of preference, your trademark counsel can run preliminary “knock-out” searches on them all in that order.  That way, if the preliminary search turns up an obvious block to any of the names you can discard that candidate without wasting the cost and time for the other evaluations.

I also mentioned emotional investment above.  If you choose only one candidate and become too attached to it, you may be inclined to ignore poor evaluation results and plunge forward with the name despite all the problems it may bring down upon you.  Making a list of possible candidates makes that occurrence far less likely.

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The Annals of Distinctiveness, Part 1: The Dentifrice Paradox; or, A Dazzling Smile Will Get You Anywhere

Gaze into this man's dazzling smile, and repeat after me: "His mark is registrable... His mark is registrable..."

In addition to discussing the trademark and copyright registration process, I intend to examine in this blog some specific cases that are unusual or remarkable.  Today, I take up that second category.

Today’s entry deals with anomalous exceptions to the requirement that marks be distinctive (and, specifically, not descriptive) of the applicant’s goods in order to be registrable with the U.S. Patent and Trademark Office.  As I discussed in my previous entry on the law and theory of this topic, Examining Attorneys at the USPTO have long been gung-ho about refusing registration on the basis of the non-descriptiveness requirement.

With all of this law and machinery focused upon preventing the registration of descriptive terms, one might be forgiven for assuming that no merely descriptive terms ever get registered.  Not so, however – there are noteworthy cases of registrations for marks so purely and wholly descriptive that one wonders whether the application was examined by anyone, in any manner.  For some reason, there appear to be an unusual number of these registrations in the oral-care field.

Consider, for example, the case of the mark TOOTH WHITE®, which appears on the Principal Register as U.S. Registration No. 1,735,592.  TOOTH WHITE is registered for… wait for it… “tooth whitener in the form of toothpaste and tooth powder.”  The mark registered in 1992 without any apparent challenge on the descriptiveness issue.  This despite the fact that is difficult to imagine any meaning for “tooth white” other than to describe the effect of a tooth whitener product.  It perhaps stands to reason that when the proposed mark appears essentially verbatim in the generic description of the goods, there may be a descriptiveness issue.

In addition, the TOOTH WHITE registrant was not asked to provide any evidence of distinctiveness under Section 2(f).  Indeed, it would have been virtually impossible for the applicant to demonstrate the kind of long-term, exclusive use required by Section 2(f), since the application was filed under the Lanham Act’s intent-to-use provisions and thus the applicant did not even begin use until after the filing.

Next let us turn our attention to the mark KEEPS WHITE TEETH WHITE®, which is lodged on the Principal Register as U.S. Registration No. 2,759,140.  The mark registered in 1999, again without any descriptiveness challenge or showing of acquired distinctiveness.

The goods description for KEEPS WHITE TEETH WHITE includes “dental gels for the prevention and treatment of tooth stains.”  And what is it that such gels do, one may ask, if not “keep white teeth white”?  At least in this case the mark did not appear verbatim in the goods description.

As was the case with TOOTH WHITE, the KEEPS WHITE TEETH WHITE application was filed under intent-to-use, so no distinctiveness could have been acquired at the time the application was examined.  And, lest you wonder, the TOOTH WHITE and KEEPS WHITE TEETH WHITE applications were handled by two different Examining Attorneys.

Finally, I offer the former (now cancelled) registration of DENTIBLANC for “dentifrices.”  This mark registered in 2001 as U.S. Registration No. 2,442,119.  The translation of the mark entered by the applicant carefully points out that “[t]he term ‘DENTIBLANC’ is from the roots ‘DENTI’ which is suggestive of ‘teeth’ and ‘BLANC’ which is ‘white’ in French.” 

Need I say it?  No descriptiveness challenge.  No proof of secondary meaning.  Yet another USPTO Examining Attorney.  The registration was cancelled in 2008, when the registrant failed to file proof of use.

It is hard to imagine marks any more clearly descriptive than TOOTH WHITE, KEEPS WHITE TEETH WHITE, and DENTIBLANC.  Yet each application went through the USPTO “like grapes through a goose,” as the old trademark attorney said.  Each of the marks registered without comment from the USPTO on the issue of descriptiveness.

I offer these cases as true anomalies, with bemused affection toward the United States Patent and Trademark Office.  I believe that the USPTO does a terrific job in the vast majority of cases.  Unfortunately, any large organization can occasionally find that an employee has been asleep at the switch, and the USPTO is no different in that regard.

Cases like these do, however, increase the sting when one is faced with what seems to be an unnecessarily enthusiastic application of Section 2(e)(1) to refuse an application on the basis of descriptiveness.  They also make the Examining Attorney’s recitation of the mantra, “each case must be decided on its own merits, and evidence of third-party registrations is not persuasive” seem especially galling.

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Refusal of Trademark Registration for Descriptive Terms

One of the goals for this blog is to encourage discussion of the substantive process of registering trademarks and copyrights.  This entry focuses on the refusal of trademark registration for terms deemed “merely descriptive.”

It is a fundamental concept of trademark law that, as a general rule, trademark protection will be denied to terms that are “merely descriptive” of the goods or services to which they are applied.  Lanham Act Section 2(e)(1) codifies and applies this long-held principle to the federal trademark registration process. 

The idea behind this refusal to register descriptive terms is fairly simple: in order to be registrable, a mark must be distinctive of the goods (that is, in the minds of consumers it must identify a single source for those goods.)  Descriptive terms by their very nature apply to all goods of a particular type, and therefore do not identify any single source.  Moreover, public policy dictates that all competitors should be free to make use descriptive terms to describe their goods.  Giving individual parties the exclusive right to use descriptive terms would “impoverish the lexicon of commerce” and put competitors at an unfair disadvantage.

"Try my RED Brand Apples - only available from me!"

It is possible to register a formerly descriptive term, provided the would-be registrant demonstrates “secondary meaning” or “acquired distinctiveness” in the term.  This amounts to a showing that the applicant has used the term on a basis so long-term, exclusive, and widespread in scope that in consumers’ minds it no longer merely describes the goods in question, but instead functions as a trademark by identifying and distinguishing the applicant’s goods from those of others.  Again, Section 2(f) of the Lanham Act codifies and applies these principles to the federal trademark registration process.

The ease or difficulty of demonstrating distinctiveness under Section 2(f) depends upon how descriptive the term was at the outset.  Simply put, the more descriptive the term was to begin with, the more evidence of distinctiveness will be required before a registration will be granted.  From this it can be reasoned that at the furthest reaches of the descriptiveness spectrum – presumably, near the point where “descriptive” terms begin to bleed into the category of “generic” terms – there may be descriptive terms for which it would be impossible to demonstrate acquired distinctiveness.

The USPTO is set up as the gatekeeper for federal trademark registrations, and thus it is the enforcer of these principles.  The USPTO is charged with rejecting applications in which the mark is merely descriptive. 

My experience across over twenty-two years of dealing with trademark applications has been that USPTO Examining Attorneys have always been enthusiastic about rejecting applications where they perceive the marks to be merely descriptive. 

In recent years, however, this “Section 2(e)(1)” enthusiasm has grown to near fever-pitch.  Lately it seems (to this reporter at least) that if any possible interpretation of an applied-for mark can be construed as having even a vaguely descriptive bent, then a descriptiveness rejection is almost certain to follow. 

Examining Attorneys often argue forcefully that if there is any significance of the mark (not merely its primary significance) that can be viewed as descriptive, then the mark cannot be registered.  Sometimes a reasoned response crafted by a skilled advocate can persuade the Examining Attorney to withdraw the refusal.  Sometimes (again, it seems with increasing frequency lately) the Examining Attorney refuses to be persuaded and issues a final refusal, in effect daring the applicant to appeal the matter to the Trademark Trial and Appeal Board.

As we will see in my next entry, however, this process is not always applied on an entirely consistent basis.

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