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On the surface,
registering a trademark seems like a rather straightforward
process. You have an original name, slogan or logo, pay the fee,
and voila! You are registered.
Well, not
exactly.
Being
“original”, insofar as the Lanham Act and the United States
Patent and Trademark Office (USPTO) is concerned, is a dicey
proposition. You can’t be too descriptive. You can’t be
confusing. In fact, the only surefire way to guarantee a
successful registration is to completely make something up. For
instance, naming your product “xchgyif” would make you fly
through the registration process. But as a practical pointer,
you’d likely want a product name your non-Slavic customers could
actually pronounce. The key is finding that fine middle ground
where originality meets function.
Being too
descriptive: Your trademark idea can’t
be “merely descriptive”. For instance, you can’t trademark the
term “brown shirt” if you are selling brown shirts (now, if
you’ve associated “brown shirt” with, say, kitty litter, you may
have a shot – more on that in a later article). Your name must
be unique and distinguish your product from someone
else’s. Once you find that unique name, the next thing you have
to do is find out whether it’s 1) already registered, or 2)
already in use in commerce. That’s where a professional
trademark search usually comes in handy. Prior use, registered
or not, comes in both identical and substantially similar forms.
Identical is easy – you simply cannot just rip off someone
else’s established mark. Substantial similarity is where the
shoulder meets the curb.
Being too
confusing: If your mark is too substantially similar to an
already existing mark, you run the risk of rejection by the
USPTO. Minor differences tend to be insufficient to pass
muster. As an example, simply changing the name of your business
by one letter is not enough to establish sufficient originality
(for instance, the business name for a collegiate apparel store
such as “fanz zone” cannot be registered because “fan zone”
already is). It takes more than a single letter to ward off the
evil spirits of substantial similarity. This can also apply to
drawings (which is the USPTO’s fancy lingo for a logo), but less
so than word-based marks. Making a drawing unique is much easier
as variations can be relatively infinite. Color and design
differences figure into the equation when discussing the
originality of drawings.
As a practical
business matter, it is important to ensure that your trademark,
whether it’s a name or a drawing, is both nondescript and
non-confusing. For some very good and economic reasons, every
new business should take time to establish a legally workable
business name or brand name. Prudently, this determination
should be made before major resources are expended creating a
brand that can later be legally pulled out from under your
business. It would be quite the financial setback to have spent
millions of dollars (or euros) creating goodwill and positive
name recognition to only have a federal court issue an
injunction and order the payment of damages for your past use of
another entity’s mark. Not only are you out of your mark, you
are also likely out substantial sums in legal fees.
This helpful
article is provided by Nathan Moore, a practicing attorney
admitted to the Tennessee bar, the United States District Court
for the Middle District of Tennessee, and the Court of Appeals
for the Sixth Circuit. |
