HOW IT WORKS FOR TRADEMARKS
1. Before you sign up, you use our free syetem on this website to screen your trademark.
2. Once you are satisfied and want to proceed with your trademark, just email us at info@bell-iplaw.com. We will email you a questionaire which you fill out and send back to us.
3. We review and prepare your trademark application and file it with the US Patent & Trademark Office (USPTO).
4. We report everything to you. You will receive all the correspondence directly from the USPTO.
5. If you ever have any questoins on how to proceed, you can contact us (or any law firm). We will be happy to help.
PICKING A GOOD TRADEMARK
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Definition: A trademark is a word/phrase/logo that identifies the source of goods or services sold in commerce.
It’s important to have a strong trademark that is inherently distinctive. This means your trademark quickly and clearly identifies you as the source of your goods or services.
STRONG TRADEMARKS
Strong trademarks are typically creative or unique, setting you apart from your competitors. These trademarks include FANCIFUL, ARBITRARY, or SUGGESTIVE trademarks.
FANCIFUL trademarks are invented words. They only have meaning in relation to their goods or services. For example, Exxon® for petroleum, Pepsi® for soft drinks, Nike, Amazon, and “X” for Twitter! These words don’t really mean anything. They are very strong marks because they are entirely FANCIFUL.
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ARBITRARY trademarks are actual words that have no association with the underlying goods or services. Think of the term “APPLE.” If an apple orchard tried to register the word “apple” as a trademark for the type of apples they grow, that trademark wouldn’t be registerable, because it would be considered “descriptive” (see below). But, Apple® has been registered as a trademark for computers because it is arbitrary and unique. Others include Google® (search engine), Target® (stores), Subway® (sandwiches).
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SUGGESTIVE trademarks are words that suggest some quality of the goods or services, but DO NOT actually DESCRIBE the type of goods or a quality of the goods or services. Consider Jaguar® for cars – it suggests speed and beauty. Coppertone® for sun-tanning products – it suggests it will make your skin shimmer like copper. Others include Netflix® (movie rental) and Microsoft® (software) and Sleep Number® (beds).
WEAK AND POOR TRADEMARKS
Weak trademarks are hard to protect against competitors and often are not federally registrable. These include DESCRIPTIVE and GENERIC trademarks.
DESCRIPTIVE trademarks merely describe some aspect of your goods or services without identifying or distinguishing the source of those goods or services. They are much harder to register. They’re only registrable in certain circumstances, such as your trademark gaining distinctiveness through extensive use in commerce over many years. The USPTO will ask you to provide evidence of distinctiveness if you want to do this.
Some examples of descriptive trademarks are:
“IBM”
“American Airlines”
“Creamy” for yogurt
“Apple pie” for potpourri smelling of apple pie
“Bed & breakfast registry” for lodging reservations services
Descriptive marks CAN be registered, but you have to register them on the SUPPLIMENTAL TRADEMARK REGISTER first and then later, if you can show evidence of distinctiveness, you can register them on the PRINCIPLE TRADEMARK REGISTER. The PRINCIPAL REGISTER is reserved for trademarks that are considered under the law to be “distinctive.” In contrast, the SUPPLEMENTAL REGISTER is for non-distinctive marks, which are trademarks that have not yet acquired distinctiveness or “secondary meaning” in the minds of consumers. The disadvantage of filing for registration on the Supplemental Register is that there is no automatic legal presumption of validity because a mark is presumed to be non-distinct. The benefits of Registration on the Supplemental Register are (i) You can say the trademark is “Registered.” (ii) You can use the ® symbol. (iii) You can sue for trademark infringement in Federal Court. After five (5) years of usage and/or registration on the Supplemental Register, the registrant can apply for registration of the mark on the Principal Register.
GENERIC trademarks aren’t even trademarks. They’re merely the common, everyday name for your goods or services. As such, they do not indicate source and cannot function as trademarks. Therefore, generic trademarks are not federally registrable.
Some examples of generic marks are: “Bicycle” for bicycles; “Bagel shop” for a bagel shop; “E-ticket” for computerized reservation and ticketing of transportation services.
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Even if you pick a great trademark, that is FANCIFUL or ARBITRARY, it can still be rejected is it is likely to be confused with somebody else’s mark that is in use and was being used before your registration. This is called LIKELIHOOD OF CONFUSION (LOC) and is the most common reason for a mark being rejected, so you have to take it seriously. Once you file your trademark, the USPTO trademark examiner conducts a search for conflicting marks and this includes looking for LOC issues. Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source.
Likelihood of Confusion is determined by looking at the following factors:
(i) Similarity of the mark – the way it looks or sounds.
(ii) Similarity of goods/services – are they similar, related or the same?
(iii) Similarity of the parties' trade channels.
(iv) The conditions under which sales are made to buyers (impulse or sophisticated purchasing decision)
(v) Evidence of actual confusion.
OTHER FACTORS TO CONSIDER
Consider how well the public will remember, pronounce, and spell your trademark. Consider the availability of the DOMAIN NAME and similar domain names. If you plan to market your goods or services outside the United States under the same trademark, consider whether your trademark has a different meaning when translated into a foreign language, particularly if the translated word could be considered offensive.