Strong Trademarks Can Be the Most Efficient Commercial Tool Ever Devised
Being able to associate a product or service with ® to designate a federally registered trademark is a strong business tool.
Purchasing decisions are continually influenced by trademarks by distinguishing products from one another and indicating a level of authenticity and quality about products and services. The International Trademark Association (INTA) in their Top Ten Reasons Why You Should Care About Trademarks calls a Trademark the Most Efficient Commercial Tool Ever Devised.
Merely Descriptive trademarks are not strong trademarks.
Trademarks are any word, term, name, symbol, or device, or any combination thereof that are used in commerce as brand names, domain names, tag lines, slogans, non-
Distinctiveness is the measure of the inherent strength of a mark( is it a weak or strong trademark?). An inherently distinctive trademark [as opposed to a descriptive or generic trademark] is a strong trademark. An inherently distinctive trademark may be registered on the USPTO Trademark Principal Register, qualifies for more protection under more federal, state and common law and is stronger for use in business to promote authenticity and for expanding product lines. The stronger the trademark the greater protection received from the courts. Nike, Inc. v. Just Did It Enterprises, 6 F.3d at 1231 (C.A.7 (Ill.), 1993) quoting Squirtco v. Seven-
What is not a Strong Trademark? (What is a Weak Mark?)
If a trademark is not inherently distinctive, such as a mark that is merely descriptive or generic, it is hard to protect from competitive use. The law does not allow trademark owners to take descriptive dictionary words and claim them for exclusive use (including geographically descriptive marks). See Examples of Strong Marks and Weak Marks.
At best, a merely descriptive trademark may only potentially be registered on either the USPTO Federal Principal Register after 5 years of acquired distinctiveness (has achieved a secondary meaning) with the proper evidence or on the Supplemental Register. See Comparison for the advantages of federal registration and the differences between the two registrations.
What is the definition of merely descriptive? A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-
According to the USPTO (see merely descriptive refusals): The two major policy reasons for not protecting [allowing registration of] descriptive marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to avoid the possibility of costly infringement suits brought by the registrant. This thus enables businesses and competitors to have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 383 (C.C.P.A. 1968); Armour & Co. v. Organon Inc., 245 F.2d 495, 114 USPQ 334, 337 (C.C.P.A. 1957); In re Styleclick.com Inc., 58 USPQ2d 1523, 1526-
Surnames are categorized as potentially being merely descrptive marks. How does the USPTO determine if a surname is common enough to be merely descriptive and issue a surname refusal? The census. See http://www.census.gov/genealogy/www/data/2000surnames/index.html for a list of the most common surnames.
Is there anything worse than being merely descriptive? Being Generic.
Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-
Can my unregistered mark be merely descriptive or generic?
An unregistered mark that is merely descriptive or generic may not actually be a trademark but just words or a trade name because it may not be legally protectable.
Federal trademark infringement, 15 U.S.C. S 1114, and federal unfair competition, 15 U.S.C. S 1125(a)(1)(A), are measured by identical standards. “To prove either form of Lanham Act violation, a plaintiff must demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant's use of the mark to identify goods or services causes a likelihood of confusion.” A&H Sportswear v. Victoria's Secret Stores, 237 F.3d at 210 (3rd Cir., 2000).
Claims for trademark infringement for registered or unregistered marks require findings that the 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-
Also, an unregistered mark must actually have been used as a trademark [is a valid mark and functions as a mark] 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).
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).
Evidence of Secondary Meaning or Acquired Distinctiveness
Evidence of secondary meaning or acquired distinctiveness may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark as a source identifier, affidavits, and any other evidence that establishes the distinctiveness of the mark as an indicator of source. See 37 C.F.R. §2.41(a); In re Ideal Indus., Inc., 508 F.2d 1336, 184 USPQ 487 (C.C.P.A. 1975); In re Instant Transactions Corp., 201 USPQ 957 (TTAB 1979); TMEP §§1212.06 et seq. The United States Patent and Trademark Office decides each case on its own merits-
Federal USPTO Trademark Registration
There are many statutory advantages of Federal Registration for trademarks on the Principal Register above and beyond those provided by common law including:
A few of these advantages apply for marks on the Supplemental Register as well. See Comparison of Principal Register with Supplemental Register for more information.
Not Just Patents ® Legal Services provides a very economical package for USPTO (or international) Trademark Registration and provides domestic representation for foreign applicants. See What to Expect from a Not Just Patents ® Trademark Attorney for more information on what steps we take to protect your rights and help you develop a strong trademark.
We suggest our service and our plan-
To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these steps:
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.
*We do not stop here but this is a good start.
If you have already received a refusal, we can provide services that include a quick and economical Response to Office Action (ROA). See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.
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