A trademark is generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than goods.
The most common reason to refuse registration is a “likelihood of confusion” between the mark of the applicant and a mark already registered or in a prior-filed pending application. The USPTO determines that a likelihood of confusion exists when both (1) the marks are similar, and (2) the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source. Generally two identical marks can coexist, so long as the goods and services are not related. Each application is decided on its own facts and there is no simple mechanical test to determine whether a likelihood of confusion exists. Therefore, before filing your non-refundable application, it is very important for you to determine whether your proposed mark is likely to cause confusion with another mark. This determination can be made only after doing a thorough trademark search.
Generally, marks fall into one of four categories: fanciful or arbitrary, suggestive, descriptive, or generic. The category your mark falls into will significantly impact whether it can be registered and your ability to enforce your rights in the mark. The strongest and most easily protectable types of marks are fanciful marks and arbitrary marks, because they are inherently distinctive. If a mark is “merely descriptive,” then it cannot be registered and protected on the Principal Register unless it acquires distinctiveness– generally through extensive use in commerce over a five-year period or longer. Generic words are the weakest types of marks and are never approved for registration. Because generic words are the common, everyday name for goods and services and everyone has the right to use such terms to refer to their goods and services, they are not protected against third parties.
The USPTO will also refuse registration of a proposed mark for many other reasons, such as if the mark is: a surname, geographically descriptive of the origin of the goods/services, an individual’s name or likeness, the title of a single book and/or movie.
Karen provides valuable legal advice to trademark clients and assists in determining if your chosen mark is available for use and if it is eligible for federal registration. Karen helps clients before, during, and after the trademark application process by completing and filing the correct trademark application form, ensuring that the application is complete, responding to any communications from the trademark office, checking the status of your application throughout the 13-18 month registration process and assisting with the required filings to maintain your trademark.