Federal trademarks offer serious protection for trademarks. They come with exclusive rights at the national level and important legal presumptions. They are not easy to come by. Even most lawyers don’t deal with them! Additionally, applying for a federal trademark starts a complex federal legal process, regardless of your trademark or business. Still, getting your federal trademark comes down to meeting the same four trademark requirements:

  • No conflict
  • Trademark distinction
  • Use in commerce
  • Ability to distinguish products

Here’s what it all means to you and your brand.

Trademark requirement no. # 1: no conflicts with other trademarks
The most important of the trademark requirements is that your trademark cannot conflict with any other federal trademark. The United States Patent and Trademark Office (or “USPTO” for short) says this is the most common reason for refusing registration.

After your application is submitted, the USPTO searches the federal trademark database for conflicts between your trademark and any other federal trademarks. When there is a conflict, the USPTO will reject your application.

This search extends to other federal trademarks that are close enough that the confusion is “likely.” The USPTO bases this decision on (1) similarity between marks in appearance, sound, or meaning, (2) similarity between goods / services, and (3) how those goods / services are purchased.

Arguments you disagree on, without much ado, will not change an examiner’s opinion.

You will need to apply the same multi-faceted 12-factor analysis that the examiner uses. This is where a trademark attorney comes in. A trademark attorney is much more likely to do this effectively.

Trademark requirement no. 2: trademark distinction
Another requirement of the trademark is difference. In the sense of a trademark, distinctiveness is a measure of how well a brand identifies the source of a product. The more distinctive your brand is, the stronger it will be and the easier it will be to register.

The USPTO measures brand distinctiveness across a spectrum and based on the products and / or services it lists in an application.

Stronger

The strongest and most distinctive marks are “fanciful.” Fancy brands are made up words without a dictionary like KODAK, PEPSI, and EXXON.

Fantasy = distinctive

Strong

The next strongest and most distinctive marks are “arbitrary.” Arbitrary marks are words with dictionary meanings that have no association / relationship with the products / services of an application. APPLE for computers is an example of an arbitrary mark.

Fantasy = Distinctive

Neutral

Next, on the distinctive character continuum, are “suggestive” marks. Suggestive brands require a mental step (imagination, thought or perception) to reach a conclusion about the nature of those products or services of an application. CITIBANK for financial services, GREYHOUND for bus lines and JAGUAR for automobiles are examples of suggestive brands.

Suggestive = Distinctive

Weak

Less distinctive marks are “descriptive” trademarks. Descriptive marks immediately transmit an ingredient, quality or characteristic of the goods or services of the application. No mental step is required. For example, the CREAMY brand would be purely descriptive for yogurt.

To register a descriptive trademark, you must show that it acquired “secondary meaning” with buyers through extensive use over several years.

Descriptive + secondary meaning = acquired distinction

Trademark requirement no. 3: use in commerce
Trademark rights are based on commercial use. So it should come as no surprise that another of the trademark requirements is that the owners use their trademarks in commerce.

The USPTO will allow you to apply before you start using, but you will still need to show that you are using their trademark to complete the process.

The use must be of a type that the United States Congress can regulate. This means use with a good or service that crosses state, national or territorial lines, or that affects commerce that crosses those lines (for example, an Internet business) or that serves interstate or international customers.

Trademark requirement no. # 4: ability to be a brand identifier
Not all words, names, symbols or devices adopted as trademarks can be registered. Some brands simply cannot distinguish and identify the source of a product. Others are excluded by federal law.

The following are a few examples:

Ornamentation: The USPTO will reject the registration of trademarks that include a characteristic or part of the “clothing” of the products.

Deceptively descriptive: The USPTO will refuse to register trademarks that misrepresent the character, quality, function, composition, or use of a product.

Protected by statute: Federal law reserves the use of certain national and international organizations in particular, such as the Boy Scouts of America and the Peace Corps. Names, symbols, seals, and medals adopted by the United States federal government, including SECRET SERVICE, COAST GUARD, and SMOKED BEAR, are also reserved.

Generic terms: Any term that identifies a product type rather than the source cannot be registered. Aspirin, Jet Ski, Bubblewrap, and Jacuzzi are examples of generic terms. A generic term can never distinguish a brand because consumers use it to refer to a category of goods / services.

In the end, it all comes down to this:
If you are serious about your business and your brand, you must protect them. A federal trademark registration is the best way to do it. We have obtained more than 2,500 trademarks and federal patents for our clients.

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