TRADEMARK SEARCH

Prior to applying for trademark registration with the United States Patent and Trademark Office (“USPTO”), it is best to have an attorney perform a search and review for the  proposed mark.  The purpose of this search is to determine:

 

1. Is anyone using the mark; and

2. how strong is the mark.

 

Prior Use

 

It is important that no one else is using the mark you would like to register.  First, if someone already registered the mark, or a similarly sounding or looking mark, you will not be able to register your trademark. Another issue is, if a portion of your mark is registered, or used for that matter, by others it will dilute the mark, and not be as strong (detailed more below).  If others are using the name prior to you, regardless of registration, you run the risk of trademark infringement.

 

Additionally, the user of a trademark in commerce generally receives a “common law” trademark once he or she begins using the mark in commerce. This protection, however, is only limited to the state(s) in which the user of the mark has a principal place of business and using the mark in commerce in that state.  Internet sales do NOT give a federal common law trademark, as one does not exist. Common law trademarks only apply to the states in which you operate and use the mark in commerce.  This becomes tricky, as a prior user of your mark may be able to keep you from using your mark in the state where they use the same or similar mark.

 

It is better to know prior users, whether federally or state protected, of your mark before they get to know you. Trademark infringement can be extremely costly. It is best to know prior to registration.

 

Strength

 

Not all tradenames are created equal and registerable with the USPTO. A mark must clear a strength threshold in order to be granted trademark registration and protection with the USPTO.   There are five categories a mark can fall under: fanciful, arbitrary, suggestive, descriptive, and generic.  For protection, a mark must be either fanciful, arbitrary, or suggestive. In the event a mark is either descriptive or generic, an applicant must show a secondary meaning (there are several blog posts on the firm’s site further explaining this concept).  

 

A fanciful mark is a name that has no meaning except for the product it is attributed to, e.g. Xerox.  An arbitrary mark is taking a word and applying it to a product that would not otherwise be associated with it, e.g. Apple.  A suggestive mark uses words that instead of directly describing the product, allows the imagination to create images of what the product is, e.g. Noburst for liquid antifreeze. A descriptive mark describes the product based on its ingredients, characteristics or functions, e.g. Light for portable computers.  Also identified as descriptive marks are proper name and geographic locations (both detailed further in separate blog posts). However, as mentioned above, these descriptive marks may gain secondary meaning and become eligible for registration, such as Sharp televisions.  A generic mark basically says what the product is, e.g. tissue.  The biggest discrepancy during the filing stage occurs for marks that fall into the suggestive and descriptive categories, in which case an examining attorney with the USPTO makes a determination. It is important to have your tradename reviewed by a trademark attorney to understand any potential issues with your tradename.

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