Basic Facts About Trademarks

A trademark may be a word, symbol, design or combination word and design, a slogan or even a distinctive sound which identifies and distinguishes the goods or services of one party from those of another. Used to identify a service, it can be called a service mark. In general, the term trademark can be used to refer to both trademarks and service marks. Normally, a trademark for goods is the word or design that appears on the product or on its packaging, while a service mark is usually the word or design that is used in advertising to identify the source or provider of the services.


A trademark is different from a copyright or a patent. A copyright gives protection for an artistic or literary work and a patent gives protection for an invention.

Unlike a copyright or patent, trademark rights can last indefinitely if the mark continues to perform a source-indicating function. The term of the Federal trademark registration is 10 years, with 10 year renewal terms. However, between the fifth and sixth anniversaries of the registration date, the registrant must file an affidavit or declaration stating the mark is still in use in commerce. If no such document is filed, the registration will automatically be cancelled.

Trademark rights arise from the use of the mark. A Federal registration is not needed for a trademark in order for it to be protected, and a trademark may be used without obtaining a registration. In fact, before a trademark registration can issue, the owner of a trademark application must use the mark on goods which are shipped or sold, or on services which are rendered, in commerce.


The USPTO may refuse to register your mark on numerous grounds. The most common are:


Likelihood of Confusion

The USPTO conducts a search for conflicting marks as part of the official examination of an application only after a trademark application is filed. In evaluating an application, the examining attorney conducts a search of USPTO records to determine whether there is a conflict between the mark in the application and a mark that is either registered or pending in the USPTO. The principal factors considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, the marks do not have to be identical or the goods and services the same; instead, it is sufficient if the marks are similar and the goods and or services related. Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion.

When a conflict exists between the applicant's mark and a registered mark, the examining attorney will refuse registration of the applicant's mark on the ground of likelihood of confusion. If a conflict exists between the applicant's mark and a mark in an earlier-filed pending application, the examining attorney will notify the applicant of the potential conflict. The applicant's mark will be refused on the ground of likelihood of confusion only if the earlier-filed application becomes registered.


Merely Descriptive and Deceptively Misdescriptive

The examining attorney will refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. A mark will be refused as deceptively misdescriptive if (1) the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and (2) the misrepresentation conveyed by the mark is plausible.

Primarily Geographically Descriptive and Primarily Geographically Deceptively Misdescriptive The examining attorney will refuse registration of a mark as primarily geographically descriptive if: (1) the primary significance of the mark is geographic; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and (3) the mark identifies the geographic origin of the goods or services.

A mark will be refused as primarily geographically deceptively misdescriptive if: (1) the primary significance of the mark is geographic; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and (3) the goods or services do not originate in the place identified in the mark.


Primarily Merely a Surname

The examining attorney will refuse registration of a mark if the primary significance to the purchasing public is a surname.


Ornamentation

In general, the examining attorney will refuse registration if the applied-for mark is merely a decorative feature or part of the "dress" of the goods. Such matter is merely ornamentation and does not serve the trademark function of identifying and distinguishing the applicant's goods from those of others.





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