At Lipton, Weinberger & Husick, we spend a lot of time reviewing office actions issued to clients who filed trademarks on their own or with a trademark service like LegalZoom or Trademarkia. Registration services provide only the bare essentials when it comes to counseling customers about picking a trademark.  They expect customers to read all their help literature so they make the best choice in selecting a registrable trademark.  Often times clients get it wrong.  Here are some pointers so you can avoid the dreaded Office Action.

1.  Understand What A Trademark Is

First, you may have to rid yourself of some pre-conceptions.  Trademarks are not simply buzz words, ornamental phrases, or pithy labels that owners put on t-shirts, mugs, or other products.  Trademarks, in fact, have a special purpose.  Here’s the official definition:

A trademark is any word, phrase, design or device that identifies the source of the goods identified by the mark.

A trademark is a “source identifier,” that is, when people see your trademark on the label of a shirt or dress, they know immediately who the manufacturer is and whether they can trust the quality of the product (same goes for services).  A phrase on a shirt or a mug doesn’t do that.  (The trademark office calls it “ornamentation” not a trademark.)  The more popular a trademark becomes in the eyes of the consuming public, think “Nike” or “Facebook”, the more goodwill the mark accumulates and the more valuable it becomes.  Some marks are worth billions.  This is one reason why so much effort is applied to obtaining a registered trademark.

2.  All Trademarks are Not Created Equal

Second, you should be careful when picking a trademark because some words don’t even qualify as trademarks.  This is particularly a problem for people who believe that the best brand name is one that describes the nature of the goods and services.  We see this a lot and it is wrong!

You have to understand that trademarks range in strength (and registerability) depending upon what category they fall in.  To begin with, trademarks must be “distinctive.”  Distinctiveness of a mark may be measured against several criteria, from strong to weak. Marks are classified as (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5) generic.  Fanciful marks are easiest to register and generic marks are not registrable at all.  Here’s a brief description of each:

A “fanciful” mark – the strongest class of trademark – is created for no other purpose than to be trademark. For example, KODAK is a fanciful mark. It does not exist in the English language and was created for the purpose of identifying products of the Eastman Kodak Company.

An “arbitrary” mark is usually an existing word that arbitrarily identifies a product or service, which has nothing to do with the word. The APPLE mark is a good example of an arbitrary mark applied to computers.

A “suggestive” mark is a one that suggests a quality or characteristic of the goods or services. Suggestive marks require a level of imagination to make the connection between the mark and the product. For example, the MICROSOFT mark is suggestive of software for microcomputers.

A “descriptive” mark is a word that describes a quality or characteristic of the product being identified. Typically, descriptive marks are not entitled to trademark protection unless they have acquired “secondary meaning.” Secondary meaning, according to one respected source, Black’s Law Dictionary (Fifth Edition), defines it in trademark parlance as the process of establishing in the minds of consumers as to the origin from one particular source of a trademark “through advertising or massive exposure ….” An example of a descriptive mark would be LIGHT for portable computers (describing the computer’s weight).

A “generic” mark identifies a particular product just by its name. Generic marks are not entitled to trademark protection because nobody should be given exclusive right to use of words, which generically identify a product. For example, MODEM or E-MAIL identify products or services by their names.  Much to the disappointment of trademark owners, what was once a valid trademark may become “generic” if the public comes to associate the mark with the product category, rather than just the product itself. If you see the term “brand” used with a mark, that means that the owner of the mark is attempting to keep it from slipping into the generic category (think “Band Aid brand sterile strips” and “Kleenex brand facial tissues”). Trademarks are almost always adjectives, so XEROX now runs advertisements reminding use that you can’t XEROX something, but you can make a photocopy on a XEROX photocopier machine.

Once you understand these terms, it should be a simple process to list potential trademarks for your goods and services.  We recommend creating a list of potential marks and provide them to to a trademark professional to evaluate.  Then we can recommend which trademarks qualify for the next step in the process, the “search”, and which may not past muster if we try to register them.

3.  A Trademark Search is Essential

Now that you have a list of potential trademarks, you have to insure that no one else has registered the mark or is using unregistered versions of the same or similar mark.  Why do we look for unregistered versions?  That’s because you don’t need a government trademark registration to obtain trademark rights.  If a business is using an unregistered trademark they are said to have “common law” trademark rights.  Registration gives you other substantial benefits but not the right to use a trademark when another business may have used it or a similar mark first for the same or for related goods and services.

Keep in mind that similar marks are not only marks that look or are spelled the same but also sound the same. CAT and KAT, therefore, are confusingly similar even though they are spelled differently. Complicating the analysis is that similarity is measured from a reasonable consumer’s perspective not from the perspective of the trademark applicant.  Also, what qualifies as a “related” good or service, an advanced subject, is not always obvious. There is a body of case law that seeks to clarify the question but requires a trained person to make a determination.

Do not waste your time and money registering or attempting to register a trademark without conducting a search.  The search is a three-step process:

1.  First, a PTO “knockout” search should be performed.  The purpose of this search is to determine whether there are any registered trademarks or pending trademark applications that are the same or similar to your proposed trademarks.  The Trademark Examiner will do his or her own search of the PTO database so you don’t want to pay filing fees without doing your own PTO search first.  You will lose your filing fees if the Examining Attorney refuses to register your trademark because your proposed trademark is the same or confusingly similar to one that is already in the PTO database.

2.  Second, an Internet search should be performed to make sure that there are not others out there using the same or a similar trademark for the same goods and services that you are selling.

3.  Finally, we recommend performing a commercial trademark clearance search.  Commercial searches are the best and most comprehensive option because they cover federal and state government, business, and digital sources.   They are expensive and many small or new businesses consider them to be a luxury.  This is risky because a commercial search will provide the highest level of assurance that there are no conflicting trademarks that are either registered, pending before the PTO, or in “common law” use.

A competent pre-application trademark clearance search and analysis performed by a lawyer is security against wasting your money.  Filing a trademark application without vetting your trademark first is risky business. Your application could be rejected by the PTO, you could receive a cease and desist letter from a senior user you were unaware of, or, worse, you could be sued for infringement.

Follow these guidelines and you will have greater confidence that your trademark application will not be a waste of your time and money.  The trademark attorneys at Lipton, Weinberger & Husick will be pleased to assist you.

—Adam G. Garson, Esq.