Issues to Be Aware of When Seeking Trademark Protection

Article co-written by Yuri Levin-Schwartz, Ph.D., a law clerk at MBHB.

Trademarks are valuable tools for businesses since they allow a trademark holder to identify and distinguish its goods from those manufactured or sold by others. However, there are many issues to be aware of when seeking trademark protection.

How to Select a Trademark

When selecting a trademark, it is important to select a registerable and protectable mark, i.e., a mark that distinguishes the goods or services of one seller or provider from those of others. Whether a mark is protectable under Federal law depends in part on how it is categorized by the United States Patent and Trademark Office (USPTO). Marks generally fall within one of four categories: arbitrary or fanciful, suggestive, descriptive, or generic.

Marks that are arbitrary or fanciful typically include words that have no relation to the goods or services being offered for sale.[1] For example, “Kodak” was an invented word that had no meaning before its use as a trademark and was, therefore, a fanciful mark. Similarly, the word “Apple,” while an actual word with meaning, had no relation to personal computers and was, therefore, an arbitrary mark. Arbitrary or fanciful marks are the strongest marks and are presumed to be protectable under federal trademark law.

Next in line are suggestive marks, which provide consumers with an indication of the character of a good or service without directly describing it.[2] For example, the word “Facebook” is indicative of the user experience of the social media website, which is similar in some ways to viewing a school yearbook or photo album, but it does not directly describe the website, since it is not actually a book of faces. Suggestive marks, like arbitrary and fanciful marks, are presumed to be protectable under federal trademark law.

On the other hand, marks that are descriptive merely describe a good or service or an attribute thereof.[3] For example, “One-A-Day” is descriptive of a daily multivitamin that is designed to be taken once every day. Descriptive marks are not immediately protectable and can only be registered if they are distinctive, as discussed in more detail below.

Finally, marks that are generic merely represent the common name of a good or service and can never be protected under trademark law.[4] For example, the word “Apple,” while arbitrary when associated with personal computers, cannot be protected as a trademark for the sale of apples. Similarly, when a mark that was once protectable becomes so widely associated with a particular good or service rather than with the owner of the trademark, it may become generic and, thus, non-protectable.[5] For example, the word “aspirin,” which was once a registered trademark, has become the common name for acetylsalicylic acid and is no longer protectable under trademark law.

Furthermore, when selecting a trademark, it is important to avoid marks that fall within certain miscellaneous categories that are denied protection under federal trademark law. For example, immoral, deceptive, or scandalous marks are not protectable.[6] Other categories of non-protectable marks include words that are primarily a surname, national symbols, or names or images of living people used without their permission.[7]

Marks found to be deceptively misdescriptive or geographically misdescriptive will also be denied protection.[8] Deceptively misdescriptive marks misrepresent some character of a good or service such that a consumer would be likely to believe the misrepresentation and purchase the good or service in reliance on the misrepresentation (e.g., associating the mark “Lovee Lamb” with automobile seat covers that are not made from lamb skin).[9] Geographically misdescriptive marks improperly associate a geographic location with a good or service in such a way that a consumer would be likely to believe that the good or service originated there when it really did not (e.g., associating the mark “The Venice Collection” with goods that are not made in Venice, Italy).[10] While geographically misdescriptive marks can never receive trademark protection, deceptively misdescriptive marks may be protected if they are distinctive, as discussed in more detail below.[11]

One further consideration when selecting a mark is how it will be viewed by various cultures or ethnicities. For example, when Coca-Cola entered the Chinese market, vendors in China labeled the soft drink with Chinese characters based on the phonetic transliteration of “Coca-Cola.”[12] While it is desirable for Coca-Cola to preserve the pronunciation of its name, the literal translation of one of the Chinese labels was “bite the wax tadpole,” which may not be the most desirable name to associate with a soft drink.[13]

Trademark Distinctiveness/Likelihood of Confusion

Once a mark is selected, federal registration of that mark may be obtained by filing and prosecuting an application with the USPTO.[14] However, as discussed above, certain marks, such as descriptive marks or deceptively misdescriptive marks, must be distinctive in order to be registered and protected.[15] Such a mark is distinctive only if it has a secondary meaning, that is, if consumers associate the mark with a particular source of goods or services despite the mark on its face being only descriptive of such goods or services.[16] It is often troublesome to show that a mark has an established secondary meaning, since it is often difficult and costly to establish what consumers actually associate with the mark.

Furthermore, when attempting to register a mark that is similar to some other registered (senior) trademark, the new (junior) mark must pass the likelihood of confusion test, which is related to whether it is likely that a consumer will be confused as to the source of goods or services associated with the two marks.[17] To find a likelihood of confusion between two marks, they need not be identical, nor do the goods or services need to be exactly the same.[18] Rather, a likelihood of confusion may be found when the marks are similar and the goods or services are related.[19] When making this determination, several factors are considered, such as the strength of the senior mark, the similarity of the marks, the proximity of the goods or services represented by the marks, whether there is evidence of actual consumer confusion, whether there is intent by the junior mark holder to capitalize on the reputation of the senior mark, and the sophistication level of consumers in the relevant market.[20] Ultimately, it is the combination of all of these factors that helps determine whether a consumer would confuse the source of the goods or services sold under the respective marks.

Trademark Use as a Requirement for Registration

In order to obtain a trademark registration, the trademark must be used in connection with associated goods or services. The use must be a “bona fide use of [the] mark in the ordinary course of trade, and not made merely to reserve a right in [the] mark.”[21] For example, a mark may be used in commerce for goods when “it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.”[22] A mark may be used in commerce for services “when it is used or displayed in the sale or advertising of services and the services are rendered in commerce.”[23]

In addition, if the USPTO determines that a mark is merely descriptive, then it is not registrable unless it acquires distinctiveness.[24] Distinctiveness may be demonstrated through proof of secondary meaning, as discussed above. However, another way to show distinctiveness is through substantially continuous and exclusive use of the mark in commerce for five years prior to registration.[25] Satisfying this use requirement creates a presumption that the mark is distinctive.[26]

Benefits of Registration

While trademark protection may be obtained without federally registering a mark, there are several added benefits of federal registration. First, federal registration provides nationwide protection unlike state or common law trademark protection regimes, which might only protect a mark within a particular state or other limited geographic area.[27] Federal registration of a mark is prima facie evidence of the registrant’s exclusive right to use the mark throughout the entire United States.[28]

Federal registration also provides other benefits, such as allowing the registrant to bring trademark infringement claims in federal court,[29] putting the entire United States on notice of rights in the mark,[30] providing customs protection,[31] creating a presumption of validity and ownership of the mark,[32] and granting the right to use the registered “®” symbol in connection with the mark.[33] Additionally, if a registered mark has been in continuous use for five consecutive years, it is considered incontestable.[34] Incontestable status prevents a trademark from being canceled for being merely descriptive and provides conclusive evidence, rather than a mere presumption, of the validity of the mark, ownership of the mark, and the exclusive right to use the mark.[35]

Proper Use of Trademarks

Once trademark protection is obtained, it is important to use the trademark properly. Trademarks should always be used as an adjective rather than as a noun or a verb. For example, the Xerox company sells Xerox copy machines; they do not sell Xeroxes, and a consumer does not Xerox a copy of paper. Using trademarks as adjectives helps prevent them from becoming unprotected generic words. Trademarks should also be used consistently. Whether the mark is a word, a design, or a combination thereof, it is important to represent the mark the same way each time it is used.

Additionally, registered trademarks should be denoted by the registered “®” symbol. This notifies the public that the trademark is federally protected and helps to provide credibility among consumers. Finally, trademarks should be displayed in a distinctive manner. For example, trademarked words may be presented in a distinctive font or typeface to distinguish them from any surrounding text.

What Should You Do if Someone Is Infringing Your Trademark Rights

If you believe that someone is infringing your trademark rights, several options are available for protecting your rights. First, if a competitor is attempting to register a mark that is similar to yours, you may initiate opposition proceedings with the USPTO.[36] These proceedings allow challenges to pending trademark registrations based on a variety of grounds. Perhaps the most common ground is to challenge an application of an offending mark based on likelihood of confusion if you believe consumers might mistake goods or services marketed under the offending mark as being associated with your company. However, applications may also be challenged on virtually any other ground that would prevent registration of a mark, including descriptiveness, genericity, deceptiveness, and lack of a bona fide intent to use the mark, among many others. Similar to opposition proceedings, if an infringing mark has already been registered, you may initiate cancellation proceedings in order to have the registration of the infringing mark canceled.[37]

Additionally, entities using potentially infringing marks may be sued for infringement.[38] However, before bringing a lawsuit, which may be costly and time consuming, it may be effective to engage an attorney to send the potential infringer a cease and desist letter. The threat of a lawsuit is often sufficient to stop or mitigate infringing uses of a mark. But if the infringer does not cease and desist, a lawsuit may be brought in federal or state court. When determining whether there is infringement, the court will apply the likelihood of confusion test discussed above.[39] If the court finds infringement, the defendant is typically enjoined from further use of the mark, and monetary damages may be awarded to the plaintiff as well.[40]

[1] See TMEP  1209.01(a) (July 2015).

[2] See id.

[3] TMEP § 1209.01(b).

[4] TMEP § 1209.01(c).

[5] 15 U.S.C. § 1064(3) (2012).

[6] 15 U.S.C. § 1052(a).

[7] 15 U.S.C. § 1052(b)­–(c), (e).

[8] 15 U.S.C. § 1052(e).

[9] See In re Budge Mfg. Co., Inc., 857 F.2d 773, 775 (Fed. Cir. 1988).

[10] See In re Save Venice New York, Inc., 259 F.3d 1346, 1355 (Fed. Cir. 2001).

[11] 15 U.S.C. § 1052(f).

[12] Phil Mooney, Bite the Wax Tadpole? (Mar. 6, 2008),

[13] Id.

[14] 15 U.S.C. § 1051.

[15] 15 U.S.C. § 1052(f).

[16] See TMEP § 1212.

[17] 15 U.S.C. § 1052(d).

[18] See TMEP § 1207.01.

[19] Id.

[20] See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961).

[21] 15 U.S.C. § 1127.

[22] Id.

[23] Id.

[24] 15 U.S.C. § 1052(f).

[25] Id.

[26] Id.

[27] See 15 U.S.C. §§ 1114, 1127.

[28] 15 U.S.C. § 1115(a).

[29] 15 U.S.C. § 1121(a).

[30] 15 U.S.C. § 1072.

[31] 15 U.S.C. § 1124.

[32] 15 U.S.C. § 1115(a).

[33] 15 U.S.C. § 1111.

[34] 15 U.S.C. § 1065.

[35] 15 U.S.C. § 1115(b).

[36] 15 U.S.C. § 1063.

[37] 15 U.S.C. § 1064.

[38] 15 U.S.C. § 1114(1).

[39] See Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961).

[40] 15 U.S.C. § 1116–17.


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