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The Benefits of a Trademark Clearance Search

What is a Trademark and Why Are Trademark Clearance Searches Necessary? 

A trademark is a symbol, word, or words legally registered or established by use as representing a company or product. Your trademark is the "source indicator" or the "anchor" to your overall brand and products. To be the only entity allowed to use a trademark, one must register it with the United States Patent and Trademark Office ("USPTO") ~ if the USPTO allows it! 

So you think you've found that perfect name that you absolutely love?!

Get excited, but not too excited.

The USPTO will reject your trademark application if the Examining Attorney finds that there is a likelihood of confusion with a prior-filed trademark. A rejection can be unbelievably frustrating, especially after spending so much time creating your brand name.  

If your name is rejected, it's may be in your best interest to create another brand name. At the end of the day, you want your trademark to be unique, strong, protectable and enforceable. 

On the sunny side, you can actually take some very important steps to drastically decrease your chances of receiving a rejection from the USPTO.  Being proactive will save you time and money.

Here's the solution for all potential trademark applicants:  Clearance searches!

Always perform a trademark clearance search before attempting to register any potential trademark. 

A trademark clearance search can be performed at a basic level via the USPTO’s Trademark Electronic Service System (TESS). However, this type of simple search is not fool-proof. It's almost impossible to search all variations and incarnations of a word mark.

You might also want to consider a more robust trademark search, one that is outsourced to a third-party search company and then reviewed and analyzed by a trademark attorney.

How to Perform a Basic Trademark Search On your Own 

It is quite simple to do a basic search by using the TESS. Here, you can search the USPTO database of registered trademarks and pending applications. 

TESS offers several options for entering search terms. One can choose from three options:

Basic Word Mark Search;

Word and/or Design Mark Search (Structured); or

Word and/or Design Mark Search (Free Form). 

However, a basic search is merely a cursory method of searching.

Even a basic search will benefit from a thorough analysis by an attorney. 

Moreover, a Comprehensive Trademark Clearance Search is strongly encouraged in most situations to avoid future trademark infringement complaints, which could result in penalties that include money damages.

USPTO offers the following stern warning about relying on one’s own basic search: 

WARNING: AFTER SEARCHING THE USPTO DATABASE, EVEN IF YOU THINK THE RESULTS ARE "O.K.," DO NOT ASSUME THAT YOUR MARK CAN BE REGISTERED AT THE USPTO. AFTER YOU FILE AN APPLICATION, THE USPTO MUST DO ITS OWN SEARCH ALONG WITH OTHER REVIEWS, AND MAY REFUSE TO REGISTER YOUR MARK. 

According to the USPTO webpage, “Trademark Basics,” hiring a competent trademark attorney is not only recommended, but an integral part of this legal process. (As an aside, foreign domiciled entities must hire a US-licensed attorney starting August 3, 2019, for handling trademark applications, maintenance, and work before the TTAB.)

USPTO states the following: 

   You may file a trademark application on your own (unless you are foreign domiciled as linked above), but if you want someone to help you or give you legal advice, you need to hire an experienced trademark attorney who is licensed to practice law in the United States. 

   Foreign attorneys and non-attorneys who work for trademark filing companies are not permitted to advise you, help you fill out a form, sign documents for you, or take actions on your application for you. 

   Hiring someone who is not allowed by the USPTO’s rules to represent you can delay your application and jeopardize its validity. 

Having a trademark roadmap that starts with visualizing your goals for your business and leads to “planting your flag” via the establishment of a trademark can be a daunting process.

It is vital to heed the USPTO’s warnings, to insulate oneself from infringement damages.

And remember, you don't just want to create a trademark that can be cleared and registered.

You want a unique trademark that is memorable and strong from both the legal and marketing perspective!  

The right attorney will not only help you with clearance searching, but might even guide you in a direction that helps you manifest that perfect brand name to fit the vision for your brand just perfectly!!!  

Need help with trademark creation or clearance?

Apply to work with me!

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The Principal and the Supplemental Registers ~ Why Amazon Sellers MUST Be Aware of the Difference!

The Federal Trademark Register is made up of two separate registers—and they are not created equal.

The Principal Register is just that—the principal, primary list of trademarks with the fullest federal protection.  

The Supplemental Register, on the other hand, is the second string, reserved for trademarks that couldn’t quite make the cut for the Principal. Let’s just call them the benchwarmers. Generally, this register is the home to trademarks that would be considered "merely descriptive" of the underlying goods and/or services associated with the trademark. 

So, what exactly is the difference?

Principal Register

The Principal Register is what all trademark owners are after. Once listed as the owner of a trademark on the Principal Register, you are legally presumed to be the exclusive owner of that trademark within the United States. This register also gives you full rights to the trademark in a court of law, should you need to pursue an infringer.

You can use the fancy ® by your mark as indicia of registration, and apply for incontestability after five years of use. How cool is that?

Trademarks that are unique, distinctive, and not merely descriptive of goods and services are typically eligible for registration on the Principal Register. {You do NOT want a trademark that is merely descriptive of your goods or services. But not to worry. We can help you!}

Currently, only trademarks on the Principal Register are eligible for Amazon’s Brand Registry enrollment program. So, if you think simply moving an applied-for trademark to the Supplemental Register because you’ve been issued a “descriptiveness refusal,” BEWARE!

 Supplemental Register

The Supplemental Register, while generally seen as less powerful than its counterpart, still offers some protection. Trademark owners on the Supplemental Register can use the ® symbol (woohoo!), and the trademark may be used as a basis for refusal for subsequently-filed confusingly similar trademark applications.

Unfortunately, a trademark on the Supplemental can never achieve incontestability.

And please, keep in mind, as mentioned previously, trademarks on the Supplemental Register are NOT currently eligible for Amazon’s Brand Registry program.

Still, further, you cannot record a trademark that is on the Supplemental Register with US Customs. So, think twice before simply amending your trademark application to the Supplemental Register if you received a mere descriptiveness refusal. A trademark attorney {like yours truly} may be able to assist you in developing legal arguments to overcome such a refusal!

The bright side? Descriptive marks can actually achieve “acquired distinctiveness” after five years of use in commerce. 

Some trademarks may wait out this sentence with a thin layer of protection on the Supplemental Register. In short, they can just hang out on the bench while the distinctiveness hopefully improves over five years of use in commerce.

 

So, how can you avoid being bumped to the Supplemental Register?

First, choose a strong trademark at the outset!  {We can help you through your trademark creation process!}

Now, while it’s better to create a strong trademark at the outset, if you do end up with an arguably descriptive mark, instead of just moving the trademark to the Supplemental Register ~ which is what is often suggested in an Office Action from the USPTO ~ you may want to consider trying to prepare arguments to overcome the descriptiveness refusal.

Convincing the Examining Attorney that your trademark should be considered for Principal Register enrollment is certainly within the realm of possibility, but formulating extensive legal arguments does not necessarily mean a slam dunk.

Key takeaways:

  1. Create a strong mark at the outset. The Trademark Trailblazer: The Brand Name Creation Blueprint, will guide you through the land mines of trademark creation ~ and will teach you how to avoid the legal traps, like ending up with a trademark that is weak and subject to a merely descriptive refusal.
  2. Beware of simply amending a trademark application to the Supplemental Register. {You may think it's an easy fix, but you might be surprised. There may be unintended consequences....}
  3. Even if your trademark ends up on the Supplemental Register for a while, don’t lose sight of the fact that you are building a brand, and not an Amazon business!

Second-string is better than not even being on the field!!!  

Do you need help creating a trademark that's unique, distinctiveness and will not be subject to a mere descriptiveness refusal? Apply to work with us and ask about our Black Diamond Service!

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We Ain't Afraid of No Ghosts ~ Is Your Trademark Vulnerable

 

The U.S. Patent and Trademark Office (USPTO) continues to grace us with clarity on what constitutes a “phantom” trademark—and the effect is only slightly less scary than the Stay Puft Marshmallow Man. The Trademark Manual of Examining Procedure (“TMEP” or the “Trademark Bible”) states that a phantom element is “a word, alpha-numeric designation, or other component that is subject to change” as part of a mark. The most common examples include a date, a location, or a model number that is subject to change.

Generally, a trademark that contains a changeable characteristic is refused registration because the mark is, in essence, multiple marks. Logically, this makes sense—it isn’t fair to all you trademark warriors out there fighting to register a single word mark or design.

However, the USPTO does allow certain marks with phantom elements to register “if the element is limited in possible variations such that adequate notice is given to allow an effective Section 2(d) [likelihood of confusion] search.” Clearly, this leaves room for interpretation. (And that, my friends, demonstrates why attorneys exist.)

If you are considering whether to include one of these poltergeist elements in your mark, or have been issued a phantom mark refusal, who ya gonna call (I’m sorry, I had to)?  

The following tips attempt to help you be the Dr. Peter Venkman of phantom trademark refusals (again, I had to):

  • Of course, the safest option is to choose a mark with no phantom elements. Choose a mark that represents your brand, but does so without needing amending or changing.
  • If you really, really need that changeable element, make sure that the phantom element is readily identifiable from the context of the mark. The TTAB recently denied registration to a company trying to register the marks “NP***” and “SL***: where the asterisks were variable number combinations. The Board found that “[b]ecause the marks’ possible range of meanings is not readily clear from the context…Applicant is seeking to register multiple marks and the public cannot predict what marks will be covered by any resulting registrations.” The Board held that the missing numbers could potentially represent numbers in a series of products, different versions of the product, or some other physical characteristic. If it is unclear from the unchanging portion of your trademark what the phantom element refers to, that is a red flag for a phantom trademark refusal.
  • Be sure that the changeable element is limited in the scope of possibilities. In the famous case In re Dial-A-Mattress Operating Corp., the Applicant attempted to register a three number phantom sequence in a phone number. The court held that because the possibilities of number sequences were finitely and manageably limited, the phantom sequence was registerable. (Not to mention that what the phantom element represented was readily identifiable from the context of the mark).
  • Don’t claim the phantom element as a part of the mark. For design marks, the phantom element cannot be integral to the mark. In June 2017, a trademark Applicant sought to register a design of the U of Miami ibis mascot wearing a hat and a blank sweater. The Examining Attorney alleged that the sweater “operates as a blank slate for whatever additional elements the applicant, in its sole discretion, sees fit to include.” Applicant stated that he sometimes placed “University of Miami,” “Miami,” or “U of Miami” (among a few others) on the sweater; and he argued that like Dial-A-Mattress, the combinations of what to put on the sweater were limited.  The TTAB held that the test for a phantom design element is whether or not the changeable element of the design is “integral to the Applicant’s mark;” and found that the wording put on the sweater was not. Because Applicant did not apply to register a series of marks; because the letterings on the specimens were not generic, but rather “independent indicators of source;” and because Applicant did not claim rights to those literal elements, the Board found that Applicant did not seek to register a phantom, or multiple, marks.

So, if you have a design mark and you want to add a star for every year you’ve been sober, little chick feet for every Grammy you win, or leave a portion of the design blank to put an initial or monogram, then you will likely be in the clear (as long as the design itself can stand on its own as distinct).

  • Avoid mark mutilation. It sounds brutal, I know, and the TTAB views it as such. Mark mutilation occurs when a portion of the composite mark is “severed” and the applicant attempts to register only that severed portion. For example, the Examining Attorney in Miami claimed that the Applicant had mutilated the ibis (yikes) by severing the accompanying logo and stripes on the sweater and attempting to register the mark without it. The TTAB disagreed and pointed to several examples of marks allowed to register without some portion of the specimen, including a monster truck design without the accompanying JURASSIC ATTACK logo that appeared in the specimen submitted.

The key is to determine whether your mark, aside from the changeable element, has a distinct commercial impression on its own. The Board held that the ibis did.

As we all know, these analyses are highly subjective and up to the discretion of the Examiner. However, including these ghost-busting tools in your arsenal can greatly reduce the possibility of a phantom refusal.

By Suzan Hixon and Bethany Gaal Patty

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Don't be a Vongle

What is a VONGLE?  I don't even know.

What does that brand name/trademark sound like to you? I don't know about you, but I HATE it.

What does it MEAN to you?

How does it make you feel? Does it conjure up any emotional feeling within you?

This term is a great example of a "brand name" that has no meaning. It doesn't elicit any emotional reaction ~ at least not for me. Nothing positive, at least.

And it's a GREAT example of why it's important to create trademarks that conjure some type of emotional reaction in consumers. And it's an even better example of the dangers of "coined" trademarks.

Coined marks can be really great from a legal perspective ~ generally, they are easy to register and they are "distinctive."

But, keep in mind that coined marks pose challenges from the marketing perspective, because they are hard to remember and sometimes challenging to share via word-of-mouth marketing. Plus, as I mentioned before, coined marks tend to fail to conjure emotional reactions in consumers. And emotional reactions ~ especially positive ones ~ are key.

Fortunately, I've never had to work on a Vongle. My clients select some pretty rad trademarks.

But, how are YOU creating YOUR brand names (ahem, trademarks)? I have a lot of prospective clients reach out to me about possible trademarks, who seem to solely guide their trademark selection process by what domain names are available or not available!

Please, do not do this!

You are doing yourself, your company, and your customers a huge disservice if you write off a totally rad trademark just because you cannot obtain the pure domain name. 

To me, "VONGLE" sounds like someone was able to grab a pure domain name, and that's about it. There's no connotation, and someone is gonna have to work really hard to educate consumers about what the hell your Vongle is. (Your trademark attorney, however, will have an easier job getting the mark registered for you....)

Consumers are educated enough to realize at this point that a lot of "pure" domain names might not be available. It's no big deal. There are ways to work around this!

Do NOT be a vongle and don't create vongle-like marks for your products or services.

If you need help creating a totally rad brand name for your private label products, I can help you. And, the cool thing is, I approach the task from both the marketing AND the legal side. 

Garlic presses rust away. Brand names can last forever. Select a strong brand name that you are thrilled to share, and one that elicit smiles from your customers.

Do this at the outset. Do it when you selecting your products (or starting your business or service).

Don't put it off as a sideshow and do not underestimate the value that a strong trademark can bring to your business ~ whether it's a private label or service-based business.

Ready to get started? Good.

I do not want to be a Vongle! {Start here!}

 

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Just 4 Quick Steps

Every day I see entrepreneurs make crucial mistakes that cost them money and put their business at risk. I’ll show you how to protect yourself in this quick guide.