Federal trademarks offer serious trademark protection. They come with exclusive nationwide rights and important legal presumptions. They are not easy to get. Even most lawyers don’t deal with them! Additionally, applying for a federal trademark initiates a complex federal legal process, regardless of your brand or your business. Still, getting your federal trademark comes down to meeting the same four trademark requirements:
- no conflicts
- Distinctive character of the brand
- use in trade
- Ability to distinguish products.
Here’s what all this means for you and your brand.
Trademark Requirement #1: No Conflicts With Other Trademarks
The most important of the trademark requirements is that your trademark cannot conflict with any other federal trademark. The US Patent and Trademark Office (or “USPTO” for short) says this is the most common reason for registration denial.
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) the similarity between the marks in appearance, sound, or meaning, (2) similarity between the goods/services, and (3) how those goods/services are purchased.
Arguments you don’t agree with, without much else, won’t change an Examiner’s mind.
You will need to apply the same 12-factor multifaceted analysis that the examiner uses. This is where a trademark attorney comes into play. A trademark attorney is much more likely to do this effectively.
Trademark Requirement #2: Trademark Distinctiveness
Another brand requirement is difference. In the trademark sense, distinctiveness is a measure of how well a trademark identifies the source of a product. The more distinctive your brand is, the stronger it will be and the easier it will be to register it.
The USPTO measures trademark distinctiveness across a spectrum and in light of the goods and/or services it lists in an application.
stronger
The strongest and most distinctive marks are “fancy”. Fancy brands are non-dictionary made up words like KODAK, PEPSI and EXXON.
fanciful = distinctive
Strong
The next strongest and most distinctive marks are “arbitrary.” Arbitrary marks are words with dictionary meanings that have no association/relationship with the products/services of an application. APPLE for computers is an example of an arbitrary mark.
Fanciful = Distinctive
neutral
Next on the continuum of distinctiveness are “suggestive” marks. Suggestive marks require a mental step (imagination, thought or perception) to reach a conclusion about the nature of the goods or services in an application. CITIBANK for financial services, GREYHOUND for bus lines and JAGUAR for automobiles are examples of suggestive brands.
Suggestive = Distinctive
Weak
The least distinctive marks are the “descriptive” marks. descriptive marks immediately convey an ingredient, quality, or characteristic of the application’s goods or services. No mental steps are required. For example, the brand name CREAMY would be merely descriptive for yogurt.
To register a descriptive trademark, you must show that it has acquired some “secondary meaning” with buyers through extensive use over a number of years.
Descriptive + Secondary Meaning = Acquired Distinctiveness
Trademark Requirement #3: Use in Commerce
Trademark rights are based on commercial use. So it should come as no surprise that another trademark requirement is that owners actually use their trademarks in commerce.
The USPTO will allow you to apply before you start using it, but you will still need to prove that you are using their mark to complete the process.
The use must be of a type that the United States Congress can regulate. This means use with a good or service that crosses state, national, or territorial lines, or that affects commerce that crosses such lines (for example, an Internet business) or serves interstate or international customers.
Trademark Requirement #4: Ability to be a Brand Identifier
Not all words, names, symbols or devices adopted as trademarks are registrable. Some brands are simply not able to distinguish and identify the origin of a product. Others are prescribed by federal law.
The following are a few examples:
Ornamentation: The USPTO will deny the registration of trademarks that include a feature or part of the “dress” of the products.
Misleadingly poorly descriptive: The USPTO will refuse to register trademarks that misrepresent a character, quality, function, composition, or use of a product.
Protected by law: Federal law reserves the use of certain particular national and international organizations, such as the Boy Scouts of America and the Peace Corps. Names, symbols, seals, and medals adopted by the federal government of the United States, including the SECRET SERVICE, COAST GUARD, and SMOKEY BEAR, are also reserved.
Generic terms: Any term that identifies a type of product rather than 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 all comes down to this:
If you are serious about your business and your brand, then you need to protect them. A federal trademark registration is the best way to go. We have obtained more than 2,500 trademarks and federal patents for our clients.
