Create a Strong Valid Trademark

Create a strong distinctive valid mark (or domain name) to indicate the source  of goods (trademark) and/or services (service mark). A trademark (goods) answers “What brand is this item/good?” and is distinctive from its competitors. A service mark (a trademark for services) answers“Who is the source of this brand of service?” and is distinctive from competitors. A trademark is an important aspect of developing and maintaining a brand by associating value and innovation with the visual aspect of the mark.

Avoiding commonly used words for trademarks is one of the keys to a strong trademark and to being inherently distinctive. The common words or key words to describe your product or service can be used right next to your trademark to indicate its use but using these words in your trademark may require a disclaimer to exclusive rights.

Because disclaimers identify descriptive, generic, and informational components of marks, disclaimers may be relied upon when assessing marks for strength. Disclaimers may also impact trademark litigation by offering guidance to courts as to which elements are entitled to greater or lesser weight when comparing marks. (See TrademarkDisclaimer.com for more info.)



Grounds for Refusal

The creation of a name is a very important aspect of protecting your business intellectual property. Many trademark registration refusals can be anticipated and avoided by creating a name that is trademark protectable. A successful mark is most importantly-inherently distinctive (not descriptive) and is not likely to be confused with a competitor’s mark.  Being merely descriptive or confusingly similar (conflicting mark) to another mark are common grounds for refusal. See Grounds for Refusal  and Function as a Mark for a list and explanation of most substantive reasons for refusal.

As part of a refusal, a USPTO trademark examiner may suggest that your trademark is not registerable on the Principal Register and suggest switching to the Supplemental Register. Supplemental Registration is a significant loss of rights over Principal Registration including the presumptive exclusive right to use the mark and right to register to protect your goods using the U.S. Bureau of Customs and Border Protection (CBP). See Comparison of Principal Register to Supplemental Register. Call us at Not Just Patents for help before surrendering this right.


Trade Names

A trade name that is used solely as a name is not registerable as a trademark. A tradename that is to be used as a mark must function as a mark as seen by the purchasing public. Showing proper function of the mark is why the Specimen Selection is very important (and why consulting with a trademark attorney before application is important).

However, a trade name (or trading style) that is not otherwise registered as a trademark is registerable with the U.S. Customs and Border Protection (CBP).

Also, Well-Known Trade Names and Trademarks may be protectable under federal law (through opposition or cancellation procedures) whether registered or not and may be protectable under ‘‘Trademark Amendments Act of 1999’’.SEC. 2. Dilution as a Grounds for Opposition and Cancellation. See Conflicting Marks-Dilution for more information.

Prior owners of trade names may have standing to oppose or cancel a registration of trademarks. See ConflictingMarks.com  and Published for Opposition see also Opposition Steps/Cancellation Steps for more information.


Standard Characters or Design Mark?

Protection of a standard character mark extends to all reasonable manners in which registrant could depict its mark. See Phillips Petroleum v. C.J. Webb, 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). See also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000) (typed drawings are not limited to any particular rendition of the mark).

However, rights in a standard character mark would not extend to include protection for those words combined with a design element. See Fossil Inc. v. Fossil Group, 49 USPQ2d 1451 (TTAB 1998); In re Pollio Dairy Products Corp., Inc., 8 USPQ2d 2012 (TTAB 1988).

For more on standard character marks, see http://federalregistrationtrademark.com/standardcharacterformat.html.


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Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Patentability Evaluation

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal


What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses


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