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Federal registered trademarks offer serious brand 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 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 of this means to you and your brand.
Trademark Requirement #1: No Conflicts With Other Trademarks
The most important of the trademark requirements is that your trademark may not conflict with any other federal trademark. The US Patent and Trademark Office (or “USPTO” for short) says this is the most common reason for rejection of 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 is extended to other federal trademarks that are close enough for confusion to be “likely.” The USPTO bases this decision on (1) the similarity between the marks in appearance, sound, or meaning, (2) similarity between the products/services, and (3) how those products/services are purchased.
Arguments you disagree 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: Distinctiveness of the Trademark
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.
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 “fanciful.” Fancy brands are made-up words without a dictionary like KODAK, PEPSI, and EXXON.
fanciful = distinctive
Strong
The next strongest and most distinctive markings 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 distinctiveness continuum are “suggestive” markings. 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 less distinctive marks are the “descriptive” marks. 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 must demonstrate that it has 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. Therefore, it should come as no surprise that another trademark requirement is that the owners actually use their marks 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 your 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 that serves interstate or international customers.
Trademark Requirement #4: Ability to be a Brand Identifier
Not all words, names, symbols or devices adopted as a trademark 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 marks that include a characteristic or part of the “dress” of the products.
Deceptively misdescriptive: The USPTO will refuse to register marks that misdescribe 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. The names, symbols, seals, and medals adopted by the United States federal government, including 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 it. A federal trademark registration is the best way to go. We have obtained over 2,500 federal patents and trademarks for our clients.