To Register, or Not to Register? An Overview of Trademark Selection and Federal Registration

In the United States a party is not required to register their mark(s) to obtain protection. Certain common law rights may be established based solely on the use of a mark in commerce. Obtaining a federal trademark registration, however, provides substantial additional rights not available under common law, discussed below.

What is a trademark?

Patents, copyrights, and trademarks protect different types of intellectual property. A copyright protects artistic and literary works, a patent protects inventions, and trademarks (or service marks) protect brand identifiers, such as names, symbols, or logos used on goods and/or services.

As outlined by the United States Patent and Trademark Office (USPTO), a trademark is “generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.” A service mark “is the same as a trademark, except that it identifies and distinguishes the source of a service rather than goods.” United States Patent and Trademark Office, Protecting Your Mark: Enhancing Your Rights Through Federal Registration, 1 (2014).

Why Register?

 As mentioned above, a party is not required to register their mark(s) to obtain protection. Under common law, trademarks are limited to the geographic area in which they are used. Common law rights require prior actual and continuous use in commerce. A party showing common law rights must demonstrate that is was the first party to use the mark within the geographic area.

Factors used to determine whether a party has acquired common law rights to a mark include, but are not limited to widespread distribution, public association of the mark with the goods/services, whether the mark has become distinctive, and whether the party owning the mark has exercised control over the quality of the goods/services. However, because of their geographic limitation, common law rights will only protect a mark holder within the geographical area where the mark is used.

Federal registration of a trademark overcomes the geographic limitation of common law rights, providing national protection of a mark. Registering a trademark provides a party with the legal presumption of that party’s ownership of the mark and its exclusive right to use the mark nationwide; public notice of a party’s claim of ownership of a mark; listing of the mark in the USPTO’s databases; the ability to record the U.S. registration with the U.S. Customs and Border Protection Service to prevent the importation of infringing foreign goods; the right to use the “®” federal registration symbol; the ability to bring an action in federal court concerning the mark; and, the ability to use the U.S. registration as a basis to obtain foreign registrations. Id. at 9.

After determining the type of protection needed is trademark protection, selecting a registrable trademark is the next step in the application and registration process.

Selecting a Mark – Considerations for Federal Registration

Not every mark is registrable or protectable with the USPTO, so selecting a mark must be done with care.

There are several factors that are considered in evaluating whether a mark is registrable and protectable. Of these, the most common reason for a mark to be refused registration is a mark’s “likelihood of confusion” with other marks. Likelihood of confusion exists when both: (1) marks at issue are similar, and (2) the goods and/or services of the parties are related “such that consumers would mistakenly believe” the marks are from the same source. Id. at 2.

The determination of whether a likelihood of confusion exists in a trademark application is fact-specific, and while there is no “simple mechanical test” to make this determination, there are several factors the USPTO considers. These include the: (1) similarity of the marks (sound, appearance, meaning, commercial impression) and, (2) relatedness of the goods and/or services. For more explanation and examples of likelihood of confusion and its factors, please visit: http://www.uspto.gov/sites/default/files/trademarks/basics/BasicFacts.pdf.

In addition to selecting a mark that will not be confused with any pre-existing trademarks, a party registering a trademark should select a “strong” mark. Selecting a “strong” mark means selecting a mark that will most easily allow a party to prevent third-party use of their mark. Id. at 5.

Trademarks generally fall into four categories: (1) fanciful or arbitrary, (2) suggestive, (3) descriptive, or (4) generic. The category a trademark falls into will impact its registrability and a party’s ability to enforce its rights in the mark. For more explanation and examples of the different categories of marks please visit: http://www.uspto.gov/sites/default/files/trademarks/basics/BasicFacts.pdf.

Other potential grounds exist for the USPTO to refuse registration. These include, but are not limited to a mark being geographically descriptive of the goods/services; disparaging or offensive; or a surname. Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP) provides more information on other possible refusals, and is available at http://tmep.uspto.gov/RDMS/detail/manual/TMEP/current/TMEP-1200d1e1.xml#/manual/TMEP/current/TMEP-1200d1e1.xml.

Conclusion

The process of selecting a trademark can be complex, and requires thought and care. A selected mark must not infringe upon any already existing marks, and a thorough search before ultimate selection of a mark is necessary. This search must not solely be restricted to Google, as search results would not yield pending or existing marks, and only conducting a USPTO search will not reveal any common law uses of a mark.\

Given the above, seeking professional services regarding the selection and search of a trademark before filing a federal registration is recommended. For more information please contact: OMedenica@medenicalaw.com.