Trademark Basics – Volume II

(This is the second of a series of posts focusing on Trademark Law. The first can be found here. Future posts will discuss Patent, Copyright, and Trade Secret law.)

Selecting a Mark and Application Types

Let's assume you've decided that you want to register a trademark. It could be your business name, or perhaps the name of a product or a service that your business sells. What kinds of issues can you expect to deal with in the course of registering your mark?

Trademark Availability Search

It can be very difficult if not impossible to secure a trademark registration for a mark that someone else is already using for the same type of product (or service – but for brevity's sake I'll refer only to products going forward). Many applicants prefer to learn about existing marks before they pay to file their own applications. There are a couple of ways to search to see what marks are out there.

One of the quickest and simplest ways is to use a search engine such as Google; simply input the mark you'd like to register and maybe one or two words describing your product and see what comes up. You shouldn't stop there, of course: the Patent and Trademark Office maintains a database of all trademark applications and registrations that you can access at www.uspto.gov (look for the “Search Marks” link).

All of this searching can get complicated – states maintain trademark registration databases as well, and a good search will look for similar marks and not just identical ones. Of course there are services out there that will conduct such a search for you for a fee. Expect to pay from several hundred dollars on up depending on what kind of a search you ask for and who is doing it. Most trademark lawyers have contacts with one or more search providers, and can help produce better search results by providing the searcher with the right information about your mark and how it's going to be used.

A typical search is likely to yield a number of “hits” – instances where others are using the mark you want to register, or a similar mark, for similar products. That doesn't necessarily mean you won't be able to register your mark, but it might affect how you go about doing so. Of course, the search results might also send you back to the trademark drawing board. A lawyer who practices trademark law can review the search results and can help you decide what to do based on those results.

Types of Marks

It's useful to understand that some marks are considered by the Trademark Office to be “stronger” than others. A classification system has been developed over the years that put labels on marks – you might have heard about “descriptive” or “fanciful” marks, for example. The gist of the system is that the closer a mark comes to describing what the product is, the harder it's going to be to register that mark because doing so could prevent others from being able to describe their competing products.

So, for example, you are not going to be able to register the mark “water” for your spring water. That would prevent other spring water companies from using the word to describe their products. You might be able to register the mark “Acme Spring Water” for your spring water product, but the Trademark examiner may require you to “disclaim” the words “spring water,” meaning that others can use those words with their spring water products. The word “water” would be considered a generic mark when used in connection with water.

The word “Acme,” on the other hand, is at the opposite end of the trademark spectrum from “water.” It doesn't call to mind anything in particular, and could be used as a trademark for pretty much anything to the extent no one else was doing so. Xerox and Kodak are two examples of this kind of a so-called “fanciful” mark.

There are other types of marks that use common words, but in a way that does not relate to the definition of the word. Selecting “Water” as a trademark for computers is one example of this. If that sounds odd to you, consider the mark “Apple” for the same type of product. These are examples of “arbitrary” marks.

Sometimes a mark will indirectly relate to the underlying product. Selecting the mark “Flowing” for your spring water product might be an example of such a mark, since it calls to mind the way that water moves. Another example of this kind of a “suggestive” mark is “Microsoft,” which might make you think of software for what used to be known as microcomputers.

Some might argue that “Flowing” when used for water is actually “descriptive” and not “suggestive.” These are the kinds of arguments that Trademark lawyers have all of the time. That is because under US law there is a significant consequence if a mark is “descriptive” – namely, you will need to provide the Trademark Office with evidence that your “descriptive” mark has acquired something called “secondary meaning” before it will be granted a registration.

“Secondary meaning” means that in spite of the descriptiveness of the mark, consumers for your product have come to associate the descriptive mark with your product. There are several ways to establish secondary meaning – such as long-term use, or large amounts spent on publicity – but the details of doing so really go beyond the scope of this piece. What you might need to know is that surnames are usually treated as descriptive marks, and so you may need to establish secondary meaning before you can register yours as a trademark.

Types of Registrations

You don't have to be using a mark yet in order to register it. By filing an “intent-to-use” application, you can basically reserve a mark for future use even if you're not yet using it. You need to have a good faith intent to use that mark for the type of product in question, and you cannot keep an intent-to-use registration alive forever – you'll have 36 months from when the Trademark Office issues its Notice of Allowance to begin using your mark, though every six months during that period you will have to file a request with the Trademark Office to extend your time to file your Statement of Use, and of course will have to pay money for each extension.

If you are already using your mark, you can file a application for registration based on that use. As you might expect, “use” has a particular meaning to the Trademark Office. You need to be using the mark “in commerce,” which means in the ordinary course of trade and not simply on samples or promotional versions of the product. Furthermore, for products, the mark must be displayed on the goods, their container, or the display associated with the goods. For services, the mark must be displayed in the sale or advertising of the services.

The next installment of this series will go into more detail about the trademark application process.