The Four Requirements for a Trademark

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Federal trademarks offer serious protection for brands. they are available with exclusive, nationwide rights and important legal presumptions. they’re tough to urge. Even most attorneys don’t affect them! Plus, applying for a Federal trademark starts a posh Federal legal process – no matter your mark or your business. Still, getting your Federal trademark comes right down to meeting an equivalent four trademark requirements:

  • No conflicts
  • Trademark distinctiveness
  • Use in commerce
  • Capability to differentiate products

Here is what all this suggests for you and your brand.

Trademark Requirement #1 — No conflicts with other registered marks
The most important of the trademark requirements is that your trademark cannot conflict with the other Federal trademarks. The U.S. Patent and Trademark Office (or “USPTO” for short) says that this is often the foremost common reason to refuse registration.

After your application is filed, the USPTO searches the Federal trademark database to seem for conflicts between your mark and the other Federal trademarks. When there’s 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) similarity between the marks in appearance, sound, or meaning, (2) similarity between the goods/services, and (3) how those goods/services are purchased.

Arguments that you simply disagree, without far more, won’t change an Examiner’s mind.

You’ll need to use an equivalent multi-faceted 12-factor analysis the Examiner is using. this is often where a trademark lawyer comes in. A trademark lawyer is way more likely than you to try to to this effectively.

Trademark Requirement #2 –– Trademark distinctiveness
Another of the trademark requirements is distinctiveness. during a trademark sense, distinctiveness may be a measure of how well a mark identifies the source of a product. The more distinctive your mark, the stronger it’ll be, and therefore the easier it’ll be to urge registered.

The USPTO measures trademark distinctiveness on a spectrum and in sight of the products and/or services you list in an application.

Strongest

The strongest and most distinctive marks are “fanciful.” Fanciful marks are invented words with no dictionary like KODAK, PEPSI, and EXXON.

Fanciful = distinctive

Strong

The next strongest and really distinctive marks are “arbitrary.” Arbitrary marks are words with dictionary meanings that haven’t any association/relationship with the goods/services of an application. APPLE for computers is an example of an arbitrary mark.

Fanciful = Distinctive

Neutral

Next on the distinctiveness continuum are “suggestive” marks. Suggestive marks require a mental step – imagination, thought, or perception – to succeed in a conclusion on the character of these goods or services of an application. CITIBANK for financial services, GREYHOUND for bus lines, and JAGUAR for automobiles are samples of suggestive marks.

Suggestive = Distinctive

Weak

The least distinctive marks are “descriptive” trademarks. Descriptive marks immediately convey an ingredient, quality, or characteristic of the products or services of the appliance. No mental step is required. for instance, the mark CREAMY would be merely descriptive for yogurt.

To register a descriptive trademark, you would like to point out that it as 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 supported commercial use. So, it should be no surprise that another of the trademark requirements is that owners actually use their marks in commerce.

The USPTO will allow you to apply before you start use, but you’ll still got to show that you simply are using your mark to finish the method.

The use must be of a kind that the U.S. Congress can regulate. this suggests use with an honest or service that crosses State, national, or territorial lines, or that affects commerce crossing such lines (e.g., an online business) or that caters to interstate or international customers.

Trademark Requirement #4 — Capability to be a brand identifier
Not every word, name, symbol, or device adopted as a trademark is registrable. Some marks are simply unable of distinguishing and identifying the source of a product. Others are precluded by Federal law.

The following are a couple of examples:

Ornamentation: The USPTO will refuse registration of marks that include a feature or a part of the “dress” of the products.

Deceptively misdescriptive: The USPTO will refuse to register marks that misdescribe a personality, quality, function, composition or use of a product.

Protected by statute: Federal law reserves the utilization of certain particular national and international organizations like Boy Scouts of America and Peace Corps. Also reserved are names, symbols, seals, and medals adopted by the us federal, including United States Secret Service, COAST GUARD, and SMOKEY BEAR.

Generic terms: Any term that identifies a kind of product rather than the source isn’t registrable. Aspirin, Jet ski, Bubblewrap, and Jacuzzi are samples of generic terms. A generic term can never distinguish a brand because consumers use it to ask a category of goods/services.

In the end, it comes right down to this:
If you’re serious about your business and your brand, then you would like to guard them. A Federal trademark registration is that the single best thanks to do this. We’ve secured over 2500 Federal trademarks and patents for our clients.