Federal trademarks provide strict protection for brands. They carry exclusive national rights and important legal presumptions. They are not easy to come by. Not even most lawyers deal with them! Additionally, applying for a federal trademark initiates a complex federal legal process—regardless of your trademark or business. Nonetheless, obtaining a federal trademark comes down to meeting the same four trademark requirements:
- no conflict
- trademark distinctiveness
- business use
- Ability to differentiate products
What it all means for you and your brand.
Trademark Requirement #1 — No conflict with other registered trademarks
The most important trademark requirement is that your mark cannot conflict with any other federal trademark. According to the United States Patent and Trademark Office (“USPTO”), this is the most common ground for refusal to register.
After you file your application, the USPTO searches the federal trademark database for conflicts between your mark and any other federal trademarks. When there is a conflict, the USPTO will deny your application.
This search extends to other federal marks that are close enough to be “likely” confusing. The USPTO’s determination is based on (1) similarity in look, sound, or meaning of the marks, (2) similarity between goods/services, and (3) how those goods/services were purchased.
Arguments you disagree with, if not more, will not change the examiner’s mind.
You need to apply the same multifaceted 12-factor analysis that the examiners are using. This is where trademark attorneys come in. A trademark attorney is more likely than you to do this effectively.
Trademark Requirement #2 – Trademark Distinctiveness
Another trademark requirement is unique. Distinctiveness, in the sense of a trademark, is a measure of the ability of a trademark to identify the source of a product. The more unique your trademark, the stronger it will be and the easier it will be to obtain registration.
The USPTO measures trademark distinctiveness within a range based on the goods and/or services you list in your application.
the strongest
The strongest and most distinctive sign is “peculiar”. Quirky trademarks are invented words like KODAK, PEPSI, and EXXON that don’t have dictionaries.
whimsy = different
strong
The next strongest and very unique flag is “Arbitrary”. Arbitrary tokens are words that have dictionary meanings and have no association/relationship with the app’s goods/services. APPLE for computers is an example of arbitrary markup.
whimsy = different
neutral
Next on the continuum of salience is “suggestive” markers. Suggestive marking requires a mental step – imagining, thinking, or perceiving – to draw conclusions about the nature of those goods or services of the application. CITIBANK for financial services, GREYHOUND for bus lines, and JAGUAR for automobiles are examples of suggestive marks.
suggestive = distinctive
weak
The least obvious marks are “descriptive” marks.descriptive markup Instantly Communicate the composition, quality, or characteristics of the app’s goods or services. No mental steps are required. For example, the CREAMY tag is only used to describe yogurt.
To register a descriptive mark, you need to demonstrate that it has acquired some “secondary meaning” from buyers through years of widespread use.
Descriptiveness + Secondary Meaning = Acquired Uniqueness
Trademark Requirement #3 – Commercial Use
Trademark rights are based on commercial use. So it’s no surprise that another trademark requirement is for the owner to actually use their mark in commerce.
The USPTO will allow you to apply before you start using it, but you will still need to prove that you are using your mark to complete the process.
Use must be of a type that can be regulated by the United States Congress. This means working with goods or services that cross state, country or territory boundaries, or affecting commerce that crosses such boundaries (for example, an Internet business) or catering to interstate or international customers.
Trademark Requirement #4 – Ability to Be a Brand Identity
Not every word, name, symbol or device used as a trademark is registrable. Some trademarks do not distinguish and identify the source of a product at all. Others are excluded by federal law.
Here are a few examples:
Decoration: The USPTO will refuse to register a mark that includes the “appearance” of a good, or part of it.
Deceptive error description: The USPTO will refuse to register a trademark that misrepresents a product’s character, quality, function, composition, or use.
Protected by law: Federal law reserves the use of certain national and international organizations, such as the Boy Scouts of America and the Peace Corps. Also retained are the names, symbols, seals and medals adopted by the United States Federal Government, including SECRET SERVICE, COAST GUARD and SMOKEY BEAR.
General terms: Any term that identifies a product type rather than a source is not registrable. Aspirin, Jet ski, Bubblewrap, and Jacuzzi are examples of generic terms. A generic term can never differentiate a brand because consumers use it to refer to a class of goods/services.
In the end, it boils down to:
If you’re serious about your business and your brand, then you need to protect them. Federal trademark registration is the single best way to do this. We have obtained over 2,500 federal trademarks and patents for our clients.
