Valid and Invalid Uses of Words, Number, Symbols, etc. as Trademarks

This is not an exhaustive list or a conclusive list, each potential trademark is considered individually by the USPTO and the courts with respect to the goods, services & facts involved.

The applicable law for trademarks: Trademark Act §§1, 2 and 45, 15 U.S.C. §§1051, 1052, and 1127.

The applicable law for service marks: Trademark Act §§1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127.

For examples of Strong Trademarks vs. Weak Trademarks, see StrongTrademark.com

VALID MARK-Functions as a Mark

NOT VALID MARK-Does Not Function as a Mark

A trademark should be distinguishable from the rest of the text by use of a different font, different size font, different color or some other designation to consistently indicate these words or this symbol is being claimed.

When the alleged trademark is not set apart in any way to show prominence with respect to other words, for instance a mission statement, like a slogan, can serve as a trademark, but if the words are mixed in with other words and not set off to describe the source of the product or service, it is just a slogan not a trademark.

A trademark should be used as an adjective (not a noun or verb) to indicate that the product or service comes from a particular source.

When the alleged trademark is used solely as a noun, such as if the specimen uses the trade name with an address and does not show what goods or services are connected with the trade name. (A trade name typically is associated with a business not specific goods or services.)

The generic name of the class of goods or services should follow the trademark, such as Bond-Aid® Wetting Agent (for a registered trademark).

When a claimed trademark is merely used to describe the qualities of a product and not used in a trademark sense to describe the source of the product. Example: The mark SOFT.COM for facial tissues is merely descriptive of the tissue.

The appropriate symbols or the word ‘brand’ should be placed next to the mark to designate that this is a claimed trademark. TM or SM can designate unregistered trademarks or services and ® for USPTO registered trademark. Example: DealFinderSM  for an unregistered trademark..

All three of these are correct uses:

Scotch brand transparent tape

Scotch® brand transparent tape

Scotch® transparent tape

Note: Registration in a state of the United States does not entitle a person to use the federal registration notice ®. Du-Dad Lure Co. v. Creme Lure Co., 143 USPQ 358 (TTAB 1964). Improper use of a federal registration symbol that is deliberate and intended to deceive or mislead the public is fraud. TMEP 906.02 Improper Use of Registration Symbol.


When a domain name that is merely used as a domain name (noun that acts as address on internet) and not used to describe the source of the goods or services.

The first time the mark is used in text, a footnote may indicate the source of the mark.

The use of a mark

in connection with advertising, promotion and preparatory activities for services to be available at some time in the future cannot support registration.


If a potential trademark, often trade dress, is functional, it is invalid as a mark whether registered or not. A feature is functional if it is essential to the use or purpose of the product or it affects the cost or quality of the product. See Functional Marks for more information.


Background designs such as common geometrical shapes and borders are not distinctive uses of a mark.

Titles of single works are not registrable but a series of works may be.

Informational matter that is descriptive

Model numbers or series numbers and grade designations that are not inherently distinctive or have not acquired distinctiveness cannot be trademarked

Names of artists and authors

Telephone numbers such as 1-800-555-NAME where merely adding numbers to a name does not make it distinctive (just as adding Inc. to a trade name does not make it distinctive).


PLAN FOR A SUCCESSFUL, STRONG TRADEMARK

To verify a potential trademark is strong, is available to use, and is ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these five steps:

1) Verify Inherent Strength (this avoids merely descriptive, geographically descriptive, likelihood of confusion and other office actions),

2) Verify Right to Use, (this avoids likelihood of confusion refusal office actions and others)

3) Verify Right to Register, (this avoids many types of refusals including merely descriptive, deceptively misdescriptive, geographically descriptive and others that can often be predicted)

4) Verify the potential mark (as currently used) Functions As A Mark, and (this avoids specimen refusals, trade name refusals, and others. The USPTO is looking for valid use not just any use of a mark.)

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing. (This avoids office actions to correct incorrect IDs  which can slow down a registration. Incorrect IDs  may be corrected during the prosecution of a trademark if they do not materially alter the mark or the ID. Correcting problems before application saves time and money. Filing in a new class after an application has been submitted to cure a problem ID is the same price as a new application in that class.)

*We don’t stop here but this is a good start!


Call us at 1-651-500-7590   for a Strong Trademark. A Strong Trademark is Not Just a tool to increase sales to customers–it is also easier to sell to your investors & licensees.


If you have already received a refusal, we can provide a quick and economical Response to Office Action (ROA). For the lowest cost and fastest ROA, have several alternate specimens available and their dates of first use in commerce and have your serial number readily available. The forms to change (revoke current) representative or to assign representation to a previously pro se application (without representation) are online at the USPTO as forms: Appointment or Revocation of Attorney or Domestic Representative and Change of Correspondence Address.


Not Just Patents ® Legal Services can help protect your Intellectual Property Rights assets by monitoring (provide a watch service for) your current Trademark Rights and Trademark Registrations against infringement. This Intellectual Property Right Maintenance Program looks for the evidence of infringement that may be found from monitoring common law sources, domain name registrations, state trademark registrations, Federal Trademark Registrations (USPTO) ®, internet sources, and the Official Gazette of the U.S. Patent and Trademark Office (USPTO) while understanding the legal definitions of infringement involved. We can monitor on a monthly or quarterly basis to expose potential infringers on your trademarks, service marks, trade dress, or domain names. See TrademarkAttorneyIPR.com for more information on Monitoring.

Stopping infringement as soon as possible is important to maintaining the integrity and authenticity of a trademark and to protecting your good name. A trademark or domain name that uses descriptive terms (is not inherently distinctive) runs the risk of losing trademark rights if the mark loses its secondary meaning from nonexclusive use. The strength and value of marks that are not inherently distinctive may depend on the trademark owner’s diligence in enforcing (protecting) the mark. See American Intern. Group [AIG], Inc. v. American Intern. Bank, 926 F.2d 829 (C.A.9 (Cal.), 1991) for more information. [This case involves AIG denying someone coverage because they were too risky and got sued for trademark infringement as a result.]


Not Just Patents ®  is a registered trademark of Not Just Patents LLC with a USPTO Federal Trademark Registration (R/N 3556868-service mark for Legal Services) on the Principal Register.


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Facts Matter

Search Not Just Patents® sites:


TrademarkServiceFirm.com

Tie It Up

Securing the Right IP

Call 1-651-500-7590 or email info@notjustpatents.com or ContactTrademark.com for Responses to Office Actions; File or Defend an Opposition or Cancellation; Patent or Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Patents

Trademarks

Steps to a Patent    How to Patent An Invention

Patent Search Steps

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill  Abandoned Trademarks

Should I Get A Trademark or Patent?

Patentability Evaluation

Trademark Disclaimers   Trademark Dilution     Oppose or Cancel?

Examples of Disclaimers  Business Name Cease and Desist

35 U.S.C. 101 Inventions patentable.

Verify a Trademark  Be First To File   How to Trademark Search

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

Trademark Statistics    Business Name Cease and Desist Letters

How To Answer A Trademark Cease and Desist Letter

35 U.S.C. 282 Presumption of validity; defenses

Trademark Refusals    Does not Function as a Mark Refusals

37 CFR § 1.53 Application number, filing date, and completion of application

Acceptable Specimen       Supplemental Register  $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Filing Requirements for Patent Applications

Trademark Attorney for Overcoming Office Actions

Functional Trademarks   How to Trademark     Surname Refusal

List of U.S. Patent Classifications

Grounds for Opposition & Cancellation     Cease and Desist Letter

How Do U.S. Patent Classifications Work?

Valid/Invalid Use of Trademarks     Trademark Searching

Patent Statistics     Sample Patent, Trademark & Copyright Inventory Forms

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion  DuPont Factors

Proximate Function

Color as Trade Dress  3D Marks as Trade Dress

Invention Information-  What is the Invention?

Ornamental Refusal  Standard TTAB Protective Order

Patent Field of Search

Descriptive Trademarks Trademark2e.com  Likelihood of Confusion 2d

Patent search-New invention

Merely Descriptive Trademarks   Merely Descriptive Refusals

Patent Search-Non-Obvious

Register a Trademark-Step by Step   Trademark Fixer

Difference between Provisional and Nonprovisional Patent Application

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

What Does ‘Use in Commerce’ Mean?    SCAM Letters

Shop Rights

Section 2(d) Refusals   ApplyToTrademark.com

Patent Pending see also Patent Marking

Typical Brand Name Refusals  What is a Family of Marks?

Patent Drawings

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

TSDR Trademark Status and Document Retrieval

What is a Small or Micro Entity?

Published for Opposition see also Opposition Steps/Cancellation Steps

Counterclaims and Affirmative Defenses

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Changes To Implement the First Inventor To File Provisions of the America Invents Act

What is the Difference between Principal & Supplemental Register? What If Someone Files An Opposition Against My Trademark?

Patent steps

How to Respond Office Actions  DIY Overcoming Descriptive Refusals

PCT Patent Application information

Trademark Clearance Search   DIY Trademark Strategies

Provisional Patent Effect on Patentability

Samples of Responses to Office Actions

ID of Goods and Services see also Headings (list) of International Trademark Classes

Broad Patents

Geographically Descriptive or Deceptive

Making Amendments in Response to Office Actions

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples Office Action Responses More Examples

Trademark Incontestability  TTAB Manual (TBMP)

Trade Secrets

What are Dead or Abandoned Trademarks? Can I Use An Abandoned Trademark?  Can I Abandon a Trademark During An Opposition?

State & Federal Trade Secret Laws

Differences between TEAS and TEAS plus  Zombie Trademark

Chart of Patent vs. Trade Secret

What Does Published for Opposition Mean?

How to Keep A Trade Secret

Acquired Distinctiveness  2(f) or 2(f) in part Extension of Time to Oppose

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