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-
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.
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).
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-
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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