Intellectual Property, Advertising, Art and Fashion Law

This is a simple question that requires a nuanced answer.  As a law firm, we always recommend use of counsel in the filing of a trademark.  An attorney provides you guidance on the selection of a mark https://dunnington.com/trademark-talk-what-makes-a-trademark-strong/, and prior searches https://dunnington.com/trademark-talk-should-i-conduct-a-prior-trademark-search/.

But as a practical matter, no, you are not legally required to have counsel file a trademark application if you are domiciled in the United States.  If you are a foreign domiciled trademark applicant or registrant, however, you must have a US-licensed attorney represent you.

The trademark registration process can take years, and may entail multiple substantive correspondences with an examining attorney from the USPTO.  In the long run, hiring an attorney can save you money, as experienced counsel can help you navigate the clearance and registration process, and address post registration issues such as potential infringements and the maintenance of your mark.

The short answer is yes, you should. Conducting a prior search can help you identify whether the mark you have chosen is already in use. This is a necessary first step before choosing labels, marketing materials, a domain name and creating a website. A branding change after all of these have been selected would be very disruptive.

The United States Patent and Trademark Office (www.uspto.gov) provides an online search system which is both intuitive and easy to use (https://tmsearch.uspto.gov/search/search-information). This includes helpful videos on how to search for trademarks. If you believe you came up with a unique mark, doing a search may help you confirm whether the mark may already being used by someone else. These “knockout” searches are a good starting point but it is usually best to rely upon a full search and the professional opinion of legal counsel.

A full search includes business registrations, domain names, state trademark registrations, social media and other databases. An experienced trademark attorney needs to review the search results and provide advice. For example, a trademark application for WILD ROSE NO. 8 for women’s perfume might be rejected if there is already a registration for WILD ROSE NO. 8 for vitamin supplements. This is because businesses that produce women’s beauty products sometimes also produce vitamin supplements. Another concern is that English terms need to be translated into their foreign equivalents. For example, a prior registration for WILD ROSE NO. 8 in French for women’s perfume would be a bar to registration.

A full prior search of a potential trademark is also important because it may prevent or reduce your potential damages if you are faced with a trademark infringement lawsuit. The failure to conduct a full search can be a factor that indicates “willful” trademark infringement. This could result in a court forcing you to turn over all of your profits to the plaintiff in the lawsuit. For these reasons, the cost of an initial search is far less than the potential legal bills arising from defending yourself in court.

So yes, conduct an initial search early on in the process and be creative in choosing a strong mark (https://dunnington.com/trademark-talk-what-makes-a-trademark-strong).

Bob Marley once said “you never know how strong you are, until being strong is your only choice.”  He was not talking about trademarks, but he certainly could have been.  Trademarks are only as strong as their ability to sustain challenges.  While you cannot anticipate all challenges ahead, you can certainly lay the groundwork to have a strong trademark.  It starts by picking the right components to your mark (https://dunnington.com/trademarktalk-whatisatrademark/).

A strong trademark is an “inherently distinctive” mark.  An inherently distinctive mark is a mark that clearly identifies the sources of your goods and services as coming from you. The mark is strong because it is uniquely associated to you.

The strength of a trademark will be judged on a sliding scale from weak to strong.  Weak marks are descriptive or generic.  For example, a generic mark would be “MILK” for milk products or “BICYCLE” for bicycles.  These types of marks do not function as trademarks because they are merely the common name for the products. They do not indicate the source of the products. Examples of descriptive marks would be “CREAMY” for yogurt or “STYLISH” for a clothing line.  These types of marks only describe the products without, again, indicating the source of the products.

Descriptive marks can only be registered if they have been used for an extensive period of time and therefore have become “distinctive”.  This requires years of use, and the ability to prove that consumers recognize the mark as the source of the products.   This can be a time consuming and expensive process.  For example, BOOKING.COM went all the way to the Supreme Court of the United States to prove that it had a valid trademark for online “booking” services.  It took years and, presumably, extensive legal fees to do so.

A stronger mark will be a “suggestive” mark.  Suggestive marks are words that suggest some quality of the product, but do not explicitly state it.  For example, “TINT TONE” for hair coloring, “SNO-RAKE” for a snow removal tool, or “NOBURST” for liquid antifreeze.  These marks are suggestive because it requires some imagination or thought to reach a conclusion as to the nature of those goods. Suggestive marks are stronger marks and are considered acceptable as trademarks.

The strongest trademarks are fanciful and arbitrary marks.  Arbitrary marks are words that have no association with the underlying goods or services.  For example, the use of “APPLE” for a family of  computers when clearly fruit has no relation to electronic equipment.  Fanciful marks are invented words and only have meaning with respect to the product with which they are associated. For example, “PEPSI” for a soft drink or “EXXON” for petroleum products.

The stronger marks that are suggestive, arbitrary or fanciful will offer the best trademark protection. Of course, for every mark that you are considering you should conduct a prior search to see whether anyone is already using that mark.  Find out more about trademark searches in next week’s post.

A trademark can be a word, phrase, symbol, design, sound, smell, or audio visual movement.  When you hear the term “trademark,” it is often used to describe not only trademarks but service marks as well.  A service mark is a mark used for services; a trademark is a mark used on goods.

The purpose of a trademark is to identify your goods and to protect your brand from counterfeit products and fraud.  Trademarks are registered with the federal government and trademark law focuses on preventing confusion among consumers. For this reason, the central question in determining whether a trademark infringes on the rights of another trademark is whether the infringing mark is confusingly similar to the registered mark.

For example, imagine a long row of cereal boxes arranged next to each other in a grocery store.  If all the cereal boxes used the same colors, sizes, and shapes, then it would be difficult to distinguish between them. A consumer could become confused and pick the cereal they do not want. Trademark registration and federal law protects the consumer by giving each trademark limited property rights to brand owners.  Therefore, when the consumer browses that cereal aisle, the consumer can easily identify the brand of cereal it wants and not be confused by another product that it never intended to purchase.

However, trademark protection is not unlimited.  While a cereal company might use a pink leprechaun logo as a trademark on a strawberry-flavored cereal, it would not prevent someone else from using a similar design for computer repair services. This is primarily because the likelihood of creating confusion among consumers is very low.

Trademark law will not protect marks that are descriptive of the goods or services.  Businesses should use “strong” trademarks that are unique to their business. Unfortunately, descriptive words are often preferred by new businesses because descriptive words describing the business might attract new consumers.  In the long term, however, it is always better to rely on unique, as opposed to descriptive, trademarks and let a good marketing campaign attract consumers to you.

Questions about trademarks?  Contact our Trademark Practice Group Chair, Olivera Medenica, at [email protected].