Federal trademarks offer serious protection for brands. They come with exclusive, nationwide rights and important legal presumptions. They are not easy to get. Even most attorneys don’t deal with them! Plus, applying for a Federal trademark starts a complex Federal legal process – regardless of your mark or your business. Still, getting your Federal trademark comes down to meeting the same four trademark requirements:
- No conflicts
- Trademark distinctiveness
- Use in commerce
- Capability to distinguish products
Here is what all this means for you and your brand.
Trademark Requirement #1 — No conflicts with other registered marks
The most important of the trademark requirements is that your trademark cannot conflict with any other Federal trademarks. The U.S. Patent and Trademark Office (or “USPTO” for short) says that this is the most common reason to refuse registration.
After your application is filed, the USPTO searches the Federal trademark database to look for conflicts between your mark and any other Federal trademarks. When there is a conflict, the USPTO will reject your application.
This search extends to other Federal trademarks that are close enough that confusion is “likely.” The USPTO bases this decision on (1) similarity between the marks in appearance, sound, or meaning, (2) similarity between the goods/services, and (3) how those goods/services are purchased.
Arguments that you disagree, without much more, will not change an Examiner’s mind.
You’ll need to apply the same multi-faceted 12-factor analysis the Examiner is using. This is where a trademark lawyer comes in. A trademark lawyer is far more likely than you to do this effectively.
Trademark Requirement #2 — Trademark distinctiveness
Another of the trademark requirements is distinctiveness. In a trademark sense, distinctiveness is a measure of how well a mark identifies the source of a product. The more distinctive your mark, the stronger it will be, and the easier it will be to get registered.
The USPTO measures trademark distinctiveness on a spectrum and in view of the goods and/or services you list in an application.
Strongest
The strongest and most distinctive marks are “fanciful.” Fanciful marks are invented words with no dictionary like KODAK, PEPSI, and EXXON.
Fanciful = distinctive
Strong
The next strongest and very distinctive marks are “arbitrary.” Arbitrary marks are words with dictionary meanings that have no association/relationship with the goods/services of an application. APPLE for computers is an example of an arbitrary mark.
Fanciful = Distinctive
Neutral
Next on the distinctiveness continuum are “suggestive” marks. Suggestive marks require a mental step – imagination, thought, or perception – to reach a conclusion as to the nature of those goods or services of an application. CITIBANK for financial services, GREYHOUND for bus lines, and JAGUAR for automobiles are examples of suggestive marks.
Suggestive = Distinctive
Weak
The least distinctive marks are “descriptive” trademarks. Descriptive marks immediately convey an ingredient, quality, or characteristic of the goods or services of the application. No mental step is required. For example, the mark CREAMY would be merely descriptive for yogurt.
To register a descriptive trademark, you need to show that it as acquired some “secondary meaning” with buyers through extensive use over several years.
Descriptive + Secondary Meaning = Acquired Distinctiveness
Trademark Requirement #3 — Use in commerce
Trademark rights are based on commercial use. So, it should be no surprise that another of the trademark requirements is that owners actually use their marks in commerce.
The USPTO will let you apply before you begin use, but you will still need to show that you are using your mark to complete the process.
The use must be of a type that the U.S. Congress can regulate. This means use with a good or service that crosses State, national, or territorial lines, or that affects commerce crossing such lines (e.g., an Internet business) or that caters to interstate or international customers.
Trademark Requirement #4 — Capability to be a brand identifier
Not every word, name, symbol, or device adopted as a trademark is registrable. Some marks are simply not capable of distinguishing and identifying the source of a product. Others are precluded by Federal law.
The following are a few examples:
Ornamentation: The USPTO will refuse registration of marks that include a feature or part of the “dress” of the goods.
Deceptively misdescriptive: The USPTO will refuse to register marks that misdescribe a character, quality, function, composition or use of a product.
Protected by statute: Federal law reserves the use of certain particular national and international organizations such as Boy Scouts of America and Peace Corps. Also reserved are names, symbols, seals, and medals adopted by the United States Federal government, including SECRET SERVICE, COAST GUARD, and SMOKEY BEAR.
Generic terms: Any term that identifies a type of product instead of the source is not registrable. Aspirin, Jet ski, Bubblewrap, and Jacuzzi are examples of generic terms. A generic term can never distinguish a brand because consumers use it to refer to a category of goods/services.
In the end, it comes down to this:
If you’re serious about your business and your brand, then you need to protect them. A Federal trademark registration is the single best way to do that. We’ve secured over 2500 Federal trademarks and patents for our clients.