Strategy for a Successful Trademark Application

Once registered, a trademark’s strength begins to accumulate as people encounter, recognize, and begin to trust what it represents. Once established with the public, a trademark can be worth millions. The beginning stages of developing a trademarkable brand can be an overwhelming consideration for small businesses. Many business entities allocate thousands, even millions, on resources to research marketing strategies (focus groups, testing, etc.). An attorney can guide your trademarking strategy, helping you mitigate future risks and easing your organizing process.

A successful trademark, taken as a whole, must be distinctive enough that consumers have come to recognize it as a source indicator. Trademark applications must be drafted so the desired mark avoids creating a likelihood of confusion among consumers, but is broad enough to confer value to the owner. All applications in the USPTO are examined on a scale from generic to distinctive. Distinctiveness can either be inherent in the mark, or acquired over time by establishing a secondary meaning among consumers. Only distinctive marks, (those that are arbitrary, fanciful, or suggestive) are registrable automatically on the principal register. Descriptive marks must prove a secondary meaning has been established to obtain registration, and generic marks are not eligible for registration at all.

The Trademark Distinctiveness Scale is as follows:

Generic marks are the most basic, functional, and commonly used words or symbols used for goods, and are often considered the “genus” of a particular good or service. Some examples include “sneaker,” “soda,” or “aspirin.” Trademarking generic words would inhibit competition and give a single market competitor the sole power to use such words in commerce.

Descriptive words or symbols aren’t quite generic, but still describe a particular quality, nature, or characteristic of the goods/services. Crash–Fixers, for an auto-repair shop describes an aspect of their services, but isn’t the generic term for said “auto-repair services,” and doesn’t require an inference to be sufficiently suggestive. Descriptive marks require proof of a secondary meaning to be considered distinctive. Tintz, for hair coloring products, is another example of a descriptive mark.

Inherently Distinctive Marks:

Suggestive marks go beyond describing the good in that they require the consumer to make a sufficient leap of imagination to get to the heart of the goods/services attached to it. Liquid Paper, for correction fluid, Maternally Yours for maternity clothing; or WordPerfect for word processing software are all suggestive marks.

Arbitrary marks are recognized words that neither suggest or describe the goods/services, and have nothing to do with such goods or industry. Puma, for athletic gear; Blackberry for cell phones; and Virgin for an airline, are all arbitrary marks.

Fanciful marks are words that are entirely made up, and thus so unique they’re automatically distinctive. Adidas, or Nike for footwear; Xerox for copiers; and Pepsi for soft drinks, are all fanciful marks.

Additionally, a mark can be sufficiently distinctive, but be barred from registration for one of the following reasons:

• Genericness, known in the industry as “Genericide,” can render a perfectly distinctive mark void or unregistrable. This occurs when the public’s or a third party’s use of the mark leads the public to use the mark as the generic name for a given product or service. Kleenex, Xerox, Escalator, and Aspirin, are all victims of genericide, under the aptly named Aspirin Doctrine of trademark law.
• Consisting of merely a Surname. A person’s name cannot be trademarked for the risk of monopolizing a third party’s use of his/her name.
• Scandalous or Disparaging marks are also ineligible for trademark registration. Such marks often contain offensive or conscious-shocking content the government wont give its stamp of approval. The recent Redskins football controversy is a great example of such a mark, as the term was ultimately deemed offensive to a relevant community.
• Geographically Misdescriptive marks, indicating a fraudulent origin.
• Suggesting a False Sponsorship, by using the flag or coat of arms, or other insignia of the United States, or any state, municipality, or foreign nation.
• Marks that are Deceptive or Deceptively Misdescriptive, and create a false representation of the goods/services offered.

In light of the foregoing procedures, it’s not only important to accurately and strategically represent and describe your trademark on your application, but to police and monitor it once granted. With our experience and knowledge we can get you on the right track towards acquiring brand loyalty, and building a mark that return your investment several times over.