Strong vs. Weak Marks

Once you decide your mark is registerable, you should also consider the difficulty of protecting your mark based on the strength of the mark selected. 

Strong Marks

A mark is generally strong if it's not confusingly similar to somone else's mark.  Clearly, if someone else is using a mark similar to your desired mark, and specially in the same market, then you won't have a good case for obtaining protections of your own.

"Fanciful or arbitrary" marks offer the greatest chance of protection.  These are marks that either have no known meaning or are used in an unconventional way.  For example, Xerox is a made-up word and Apple (for computers) is not used in the typical "fruity" way.  Therefore, both these words are used as strong marks.

Although not as strong as fanciful or arbitrary marks, "suggestive marks" are also considered strong.  These are marks that suggest, but do not describe, qualities or a connection to the goods or services.  An example is "Microsoft" which suggests software-related services.  If you do not wish to use a fanciful or arbitrary mark, a suggestive mark is your next best bet.

Weak Marks

A mark is on the weaker side if it's too similar to an already existing mark and can cause a "Likelihood of Confusion".  Additionally, "descriptive" marks, such as "Best Clothing Store" or "Santa Monica's No. 1 Mechanic Shop" are generally very difficult to get registered.  If the USPTO determines that a mark is “merely descriptive,” then it is not registrable or protectable unless it acquires distinctiveness, typically achieved through extensive use in commerce over a five-year period or longer.  Descriptive marks are considered “weak” until they have acquired distinctiveness.  

The weakest category of marks is a "generic" mark.  For example, "Cocktails" for a bar, or "Subs" for a sandwich shop.  This category could also include trademarks that eventually became generic because of long-term widespread, nontrademark use.  For example, "escalator" for moving stairs.

It’s important to note that the USPTO only registers marks.  You, as the mark owner, are solely responsible for enforcement.  An experienced attorney can help with continued monitoring of your mark against potential violations.

Will I have a successful trademark application?  (“Likelihood of Confusion”)

So far, we have talked about different protections offered under intellectual property laws and the difference between goods and services.  Once you’re ready to apply for trademark protection, you will need to ensure your mark is in fact “registerable” with the United States Patent and Trademark Office.  So what makes a mark “registerable”?  There are a few factors to consider, including choosing a mark that’s not too similar to other marks in the same market.

The USPTO examines every application for compliance with federal law and rules.  Most commonly, trademark applications fail because there is a “likelihood of confusion” between the mark and a mark already registered or in a prior-filed pending application owned by another party.  The USPTO determines that a likelihood of confusion exists when both (1) the marks are similar, and (2) the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source.  Similar marks or related goods/services by themselves are not enough to support a finding of a likelihood of confusion, unless a court has held that the mark is actually a famous mark.  

So what defines similarity?  To determine whether a likelihood of confusion exists, the marks are first examined for their similarities and differences.  Note that in order to find a likelihood of confusion, the marks do not have to be identical.  When marks sound alike when spoken, are visually similar, have the same meaning (even if in translation), and/or create the same general commercial impression in the consuming public’s mind, the marks may be considered confusingly similar.  Similarity in sound, appearance, and/or meaning may be sufficient to support a finding of likelihood of confusion, depending on the relatedness of the goods and/or services.  The following are the USPTO's examples of marks that would be considered similar:

Generally, two identical marks can co-exist, so long as the goods and services are not related.  The relatedness is determined by considering the commercial relationship between the goods and/or services identified in the application with those identified in the registration or earlier-filed application.  To find relatedness between goods and/or services, the goods and/or services do not have to be identical.  It is sufficient that they are related in such a manner that consumers are likely to assume (mistakenly) that they come from a common source.  The issue is not whether the actual goods and/or services are likely to be confused but, rather, whether a likelihood of confusion would exist as to the source of the goods and/or services.  The following are the USPTO's examples of related goods and/or services:

Please note that each trademark application is decided on its own facts and no simple mechanical test is used to determine whether a likelihood of confusion exists.  Therefore, before filing the non-refundable trademark application, it is important to speak to an experienced attorney to determine whether your proposed mark is likely to cause confusion to the consumers. 

Questions?  Give the Formation law Group a call at (424) 256-6614 or send us a line through info@formationlaw.com.

What's the difference between Goods and Services?

In the last post, we talked about using trademark (^TM) for goods and service mark (^SM) for services, to indicate intellectual property protections.  But what makes a good, good?

Goods are tangible products, such as cars or tables. Services, on the other hand, are activities performed for the benefit of someone else, such as car rental services or catering.

The difference between goods and services is not always obvious.  Are your customers paying for a product or paying you to perform a specific activity?  If your customer is buying your product, such as a car or table, then you have goods.  If your customer is paying you to perform an activity, such as catering or providing car rentals, then you have services.  

You may list both goods or services in a trademark application.  Please note that if you are filing based upon “use in commerce,” you must be using the mark in commerce on all the goods/services listed.  If you are filing based upon an “intent to use" the mark, you must have a good faith or bona fide intent to use the mark on all the goods/services listed.

The USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual) contains a listing of all acceptable classifications of goods and services [1].  Any entry you choose must accurately describe your product.  A failure to correctly identify the goods/services associated with the mark may prevent you from registering your mark.  Unfortunately, the USPTO filing fees are not refundable, even if the application fails.

If the ID Manual does not contain an accurate listing for your goods/services, please do not pick the “closest” option.  Rather, a unique identification should be created, describing your goods/services using clear, concise terms that the general public easily understands.  If you use vague terms, such as “miscellaneous services” or “company name,” your application will be considered void and you must file a new application.

It is important to note that although you may clarify or limit the goods/services, you may not expand or broaden their scope.  For example, if you filed for “shirts,” you may limit the goods to specific types of shirts such as “t-shirts and sweatshirts.”  However, you may not change the goods to “pants.”  Likewise, if you file for “jewelry,” you may change the goods to specific types of jewelry such as “jewelry, namely, earrings”.  However, you may not change the goods to a service such as “Gem and jewelry repair and cleaning services”.  It's always a good idea to seek the help of an experienced trademark attorney in determining the correct classification of your products before applying for registration with the United States Patent and Trademark Office. 

Questions?  Give the Formation Law Group a call at (424) 256-6614 or send us a line through info@formationlaw.com.

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[1] http://tess2.uspto.gov/netahtml/tidm.html