Trademark Selection and Response to Trademark Office Actions


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Trademarks help consumers to make informed decisions about goods and services that they purchase. Selection of branding for a business should include advice from a marketing professional and a trademark search performed by an intellectual property attorney. The trademark search can identify issues that should be promptly addressed and should prepare a business to either avoid a trademark office action or to develop a winning argument in response to the office action.

Businesses typically work with their marketing team to perform their branding efforts before engaging their attorney in the selection process. More traditional trademarks use words, phrases, symbols or designs to identify and distinguish the source of goods and services from the competition. For example, when consumers see the Apple® mark, they immediately think of mobile computer devices.
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When consumers see or hear the phrase “Just Do It®,” they immediately think of goods offered by Nike, Inc. In addition, businesses may use non-traditional marks such as colors, sounds and shapes.

The category of the trademark that is selected is important. Trademarks that are arbitrary, fanciful and suggestive are stronger marks. The Apple® mark is an arbitrary mark when used in connection with mobile computer devices. The Coppertone® mark is suggestive of suntan lotion. The Xerox® mark was invented and has no dictionary definition – making it fanciful in its use.

When the trademark choices have been narrowed down, and before filing for registration with the United States Patent & Trademark Office (“USPTO”), a trademark search should be performed to identify any issues that should be addressed during the selection process. In some cases, the proposed trademark may not be available and should be somewhat modified or entirely changed. The trademark search should also prepare your business for response to a possible trademark office action.

The trademark search may reveal other trademarks that have been registered, or that have pending applications, upon which your proposed trademark may likely infringe. The legal test is whether the proposed trademark would cause a likelihood of confusion with the other party’s trademark. Clearly, use of this proposed mark would not be recommended and could place your business into a dispute and result in damages. The trademark search may reveal other trademarks and associated goods and services that are close but not likely causing confusion. While the USPTO Examiner may issue an office action and refuse registration on the basis that the proposed mark would cause a likelihood of confusion with these marks, the legal argument for the response will have been thought out in advance.

The USPTO Examiner may otherwise issue a trademark office action refusing registration on the basis of the mark being descriptive. Trademarks that are descriptive are not strong marks and not easily protected. Such marks describe a characteristic, quality, function, purpose or use of the goods and services. Because these marks describe the goods and services, rather than identify the source of the goods and services, they cannot be registered with the USPTO until consumers link the trademark with the source – or in other words, until there is secondary meaning or acquired distinctiveness.

A trademark that is a generic term is not protectable. Marks that come to have the common meaning of their associated goods and services have become generic. For example, the marks Aspirin and Elevator have become generic.

Even if the USPTO Examiner approves the mark for registration, a third party can still file an opposition to your proposed trademark. Such third parties could oppose your proposed registration for many of the same reasons that an Examiner may refuse registration, such as a likelihood of confusion or descriptiveness. In a recent situation, the application for the mark Spinfire as used to identify “restaurant services, including sit-down service of food and take-out restaurant services” was successfully opposed by the owner of the Spin! logo as used to identify “prepared foods for consumption on and off premises.” See Spin Concepts v. Capital Restaurant Group (TTAB 2015).

By performing a trademark search and taking actions to modify the proposed trademark as needed, your business can more effectively respond to trademark office actions and oppositions. The path to registration becomes more likely.

Although your business can use a trademark without federal registration, there are advantages to receiving federal registration. For example, a company that obtains federal registration of a trademark is presumed to be the owner of the trademark for the associated goods and services and is afforded exclusive nationwide use of the trademark within a recognized scope of business.

In conclusion, branding and the associated trademark protection are vital to the success of a business. During the process for trademark selection and registration, trademark searches are key to clearing use of trademarks for the applicable goods and services of your business.

ABOUT THE AUTHOR: Vasilios Peros
Vasilios Peros is founder and principal of Law Office of Vasilios Peros, P.C. His practice is focused primarily on business, technology and intellectual property law. He has been recognized as one of Greater Baltimore’s top attorneys, including SmartCEO’s 2016 Centers of Influence, 2015 CPA + ESQs, 2014 Power Players, and Legal Elite in 2011, 2010 and 2009.

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Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.

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