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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 |
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VALID MARK- |
NOT VALID MARK- |
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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. |
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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.) |
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The generic name of the class of goods or services should follow the trademark, such
as Bond- |
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. |
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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- |
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. |
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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. |
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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. |
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Background designs such as common geometrical shapes and borders are not distinctive uses of a mark. |
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Titles of single works are not registrable but a series of works may be. |
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Informational matter that is descriptive |
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Model numbers or series numbers and grade designations that are not inherently distinctive or have not acquired distinctiveness cannot be trademarked |
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Names of artists and authors |
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Telephone numbers such as 1- |
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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- 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- |
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