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How to Strengthen your Chances of Registering a Trademark

When you see two golden arches that form the letter “m”, your mind probably jumps to McDonalds. That world-famous logo was successfully registered as a trademark, and has served as a way for consumers to recognize the source of the product ever since.

Registering a trademark has many advantages. Registration can discourage other companies from using a similar mark, because the registration makes it easily searchable to the public, in effect deterring them. In addition, future applications of similar marks will be refused registration, as the United States Patent and Trademark Office (USPTO) is required to cite existing registrations against new applications. In the event of trademark infringement, the registered trademark holder has the ability to sue for damages.

The application process to register a trademark can be difficult to navigate, but there are a few steps an applicant can take to make it smoother and more likely to result in a registration. If there are registration-barring problems within an application, a trademark examiner employed by the USPTO will respond to the applicant by issuing an “Office action”. Office actions detail exactly what about the application prevents it from being registrable. Often, the reason for rejection is the genericness or descriptiveness of the mark.

Trademarks are categorized by their ability to identify a source, on a scale of distinctiveness. The four classifications of distinctiveness are: 1. Arbitrary or fanciful, 2. Suggestive, 3. Descriptive, and 4. Generic (in descending order). The more distinct a trademark is, the more likely it is to be registered. Beginning from least distinctive, a generic mark is one that obviously describes whatever the product itself is. For example, if the product was a table, a generic mark for the product would also be “table”. Trademark law does not permit generic marks to be registered, and they can never be distinctive.

A step up from generic marks are descriptive marks. These require only a little bit of imagination from the general public to figure out what the product is. An example of this would be “Sweet and Salty” to describe a trail mix with sweet and salty components. Descriptive marks only meet the registrable standard of distinct if they have acquired secondary meaning. Secondary meaning refers to when consumers recognize the mark as the source indicator. Examples of descriptive marks which have acquired secondary meaning are “Windows” and “Sharp”.

Suggestive marks are inherently distinctive, and can be registered as trademarks. They require the public to make some imaginative leap between the mark and the advertised product. Examples of famous suggestive marks are “Playboy” and “Coppertone”. Finally, there are arbitrary or fanciful marks. These are inherently distinctive as well, and have the strongest chance at being registered. Arbitrary or fanciful marks give the consumer no obvious relationship between the mark and the product. “Kodak” and “Apple” are examples of arbitrary and fanciful marks that have been successfully registered.

In accordance with these categories, an applicant has a greater chance of being successfully registered if the mark is strong, requiring more imagination from consumers to determine what the product is.

Another way to minimize road blocks in the trademark registration process is to start using the mark in commerce as soon as possible. If the mark is already in use, then the application process becomes a bit easier. If the applicant must apply under an “intent to use” rather than a “use in commerce”, they must wait to be officially registered before they can submit a Statement of Use. In addition to that, it is helpful for an applicant to have a specimen of their trademark ready for the application.

A specimen of a trademark shows the USPTO how your trademark has been used in commerce. For standard trademarks in connection with goods, a specimen cannot merely be a drawing or mark-up of the trademark. It must be a real-life sample of how it is used on the goods in commerce. Office actions that are refusals issued on grounds of the lack of a proper specimen, an applicant may overcome responding by submitting a specimen, changing the basis of the application to “intent to use” rather than “use in commerce”, submitting a verification of the specimen, submitting evidence that the specimen was used with the goods, or submitting an unaltered, legible copy of the originally submitted specimen. Of course, submitting a proper specimen at the outset is the best way to avoid this extra hurdle.

Finally, the simplest way to ensure a clean application process is to submit a thorough and accurate application. Applicants may want to first print out a PDF version of the application and make sure they have all the fields accurately filled out and answered before trying to register their mark on the UPSTO website just to be sure to catch any oversights before the examining attorney does. Some fields to pay attention to are the correct classification of the goods or services, the submission of a specimen, or the adding of any disclaimers for the mark.

These three steps: choosing a strong mark, having a valid specimen available, and carefully answering the questions on a trademark application, are all simple ways to reduce the number of Office actions the USPTO must issue before the trademark can be properly registered. With these techniques, applicants can be well on their way to registering a trademark to officially protect their brand.

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