Trademark Basics
Steps for a Trademark
Virtually every business could benefit from a trademark! According to a 2013 report by the USPTO, trademarks cover a broader set of participants in the economy [than patents] because almost every firm, regardless of size, market, or business strategy, has goodwill to protect. (The USPTO Trademark Case Files Dataset: Descriptions, Lessons, and Insights, January 2013)
Trademarks are any word, term, name, symbol, or device, or any combination thereof
that are used in commerce as brand names, tag lines, slogans, non-
The long potential length of a trademark life is evidenced by the oldest registered trademark for a “SAMSON” logo that was issued in 1884 (U.S. Reg. No. 0011210 for CORDS, LINES, AND ROPE.)
Stronger distinctive trademarks (see below green and to the left) are easier to enforce and to sell to investors. Marks that are merely descriptive can possibly become distinctive enough to register on the Principal Register by acquiring distinctiveness (green arrow shift to the left).
Common Law Trademarks
Trademark Rights originate as common law trademark rights by use in commerce as a trademark. Common Law Trademark rights are a collection of rights that originate when an inherently distinctive trademark that distinguishes one product from another is used to identify the source of a good or service in commerce. (Trademarks that are not inherently distinctive, such as those that are merely descriptive, might acquire a secondary meaning after a period of time if a number of other factors are present, see more below.)
Common law trademark rights (where defined by case law) exist in local geographic areas without registration and may be able to successfully usurp a registered mark in the same geographical area if the alleged common law trademark owner can show prior use (or senior use) of the mark. The Lanham Act provides that a registered mark, even if it has become incontestable, still may be challenged "to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark." 15 U.S.C. 1065 as quoted in Advance Stores Co. Inc. v. Refinishing Spec. Inc., 188 F.3d at 411 (6th Cir., 1999). A challenge to a registered mark by an unregistered mark could be in a USPTO opposition or cancellation or in a state or federal court. See trademarkoppositionprocess.com for more information on oppositions and cancellations.
Common law trademarks do not, however, enjoy the advantages of federal registration
(see chart) which include being protected more thoroughly from infringement and counterfeiting
trademarks. Marks that do not qualify for federal registration may not qualify for
common law protection for the same reasons since the federal laws are based on the
same or similar common law principles. Likewise, having a federal registration does
not protect a business from being challenged by a common law trademark-
Unregistered Trademarks
Unregistered trademarks are protected by law under more than just common law (case law) because various state statutes and federal statutes have adopted (codified) the concepts and terminology that were developed in case law. One applicable federal law for unregistered trademarks is 15 USC § 1125(a) of the Lanham Act: False designations of origin, false descriptions, and dilution forbidden (a) Civil action:
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities;
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
Claims for trademark infringement for unregistered marks require findings that the
unregistered 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, an unregistered mark must actually have been used as a trademark 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 manner examples below or the web site Function As a Mark.com for examples on how a trademark should function.
GEOGRAPHIC RIGHTS FOR UNREGISTERED MARKS ARE LIMITED
A common law mark (unregistered mark) has geographically limited rights (prior use)
against a subsequent user under the Tea Rose/Rectanus doctrine -
This prior use right may be enforced through an opposition or cancellation proceeding. See Published for Opposition see also Opposition Steps/Cancellation Steps for more information.
How to Prove Secondary Meaning or Acquired Distinctiveness under Section 2(f)
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).
In In re Soccer Sport Supply Co., 507 F.2d 1400, 1403 n.3, 184 USPQ 345, 348 n.3 (C.C.P.A. 1975), the Court of Customs and Patent Appeals noted as follows:
[T]he judicially developed concept of “secondary meaning,” codified by section 2(f) (15 U.S.C. 1052(f)), relates to descriptive, geographically descriptive, or surname marks which earlier had a primary meaning which did not indicate a single source and were, therefore, unregistrable because of section 2(e) (citation omitted). Additionally, section 2(f) has been applied to permit registration of a mark consisting solely of a design and, therefore, not within the purview of section 2(e).
PLAN FOR A SUCCESSFUL, STRONG TRADEMARK
To verify a potential trademark is strong, is available to use, and is ready to register, the process should be more than a direct hit federal search by a service unfamiliar with trademark law. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these five steps:
1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions),
2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)
3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)
4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimens refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)
5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs which can slow down a registration. Incorrect IDs may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)
*We don’t stop here but this is a good start!
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Not Just Patents ® is a registered trademark of Not Just Patents LLC with a USPTO
Federal Trademark Registration (R/N 3556868-
Search Not Just Patents® sites:
Aim Higher SM
Not Just Patents®
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Trademark Rights |
Principal Register |
Supplemental Register |
Common Law |
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Bring infringement suit in federal court based on the federal registration |
YES |
YES |
NO |
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Can be used by trademark examiner against future applications of confusing similar marks |
YES |
YES |
NO |
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Mark is easy to find for search reports |
YES |
YES |
NO |
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Owner can use ® to symbolize federal registration |
YES |
YES |
NO |
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Incontestability of mark after 5 years |
YES |
NO |
NO |
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Statutory presumption of validity |
YES |
NO |
NO |
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Statutory presumption of ownership |
YES |
NO |
NO |
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Statutory presumption of distinctiveness or inherently distinctive |
YES |
NO |
NO |
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Statutory presumption of exclusive right to use the mark in commerce |
YES |
NO |
NO |
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Can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods |
YES |
NO |
NO |
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Ability to bring federal criminal charges against traffickers in counterfeits |
YES |
NO |
NO |
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Use of the U.S. registration as a basis to obtain registration in foreign countries |
YES |
NO |
NO |
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