So, you’ve decided to take the plunge and seek federal registration of your logo or brand name (collectively we refer to these brand assets as “marks” throughout this article). Congratulations! You’re taking a huge step in creating a “sword and shield” to protect your intellectual property. However, we would be doing you a disservice if we leapt into this process without giving you some idea of what’s ahead. To give you a better idea of what to expect, this article lays out preliminary concepts of the application process.
The Viability Analysis – How “Strong” Is Your Mark?
First off, let’s talk about your mark’s “strength” to give you a better idea of how difficult and unpredictable the battle ahead will be. We are assuming, for purposes of this section, that you will be registering a “word mark” as opposed to simply a graphic design. If you are registering a graphic design without any words at all, then you can skip down to The Application Process section.
There are five categories of a mark’s “strength” used by the United States Patent and Trademark Office (“USPTO”), which form a spectrum from strongest to weakest protection. They are: Fanciful, Arbitrary, Suggestive, Descriptive, and Generic. Before the USPTO will even look at the rest of your application, it will first determine where your mark fits into this spectrum. If the USPTO determines that your mark is descriptive or generic, they will reject your application. But if they determine that it is fanciful, arbitrary, or suggestive, they’ll move on to see if they can find other reasons to reject your application (the application process is quite literally a gauntlet for your mark to run, but at least you’ll have gotten over this hurdle).
These categories are laid out in the table below from strongest to weakest. You can use this table to determine your mark’s potential strength during and after the application process:
|Fanciful||These are made-up words and have no dictionary meaning. Examples include: Kodak®, Tootsie Roll®, and Exxon®. These are the easiest marks to register (provided they aren’t too similar to another registered mark) because they are original, and will afford you the strongest protection once registered.|
|Arbitrary||These are marks that have a dictionary meaning, but are used for products/services unrelated to that meaning. Examples include: Apple® for computers (because a computer isn’t a delicious fruit) and Sun® for microchips (because microchips aren’t fiery celestial bodies). These marks are registrable and will afford you strong protection, but not as robust as a fanciful mark.|
|Suggestive||These are marks that hint at the nature of the product/service or one of its features without actually describing the product/service. Examples include: Airbus® for planes (hey, it is sort of like a bus with wings), and Coppertone® for tanning products (they’ll give you that desirable copper-colored skin!). This category comes with an invisible line that, if crossed, will mean your mark is considered “Descriptive” instead of “Suggestive.” For this reason, if you think your mark falls into this category, you should think critically about whether your mark might be too descriptive of your product/service, and possibly make alterations to make it less descriptive.|
|Descriptive||These marks describe a feature or attribute of the product/service, and are thus generally not registrable because they do not immediately set your products/services apart from others in the industry (however, see section below discussing Principal vs. Supplemental Register). Examples include: Nutz for peanuts, Axx for axes, or Britelyt for flashlights. The line between the Descriptive and Suggestive categories is not at all clear, which makes any prediction of success extremely difficult. It is possible for a descriptive mark to become so associated with a product/service through widespread use and advertising that it is then more certain to gain registration; however, this usually takes a minimum of two years of continuous use. One method of strengthening your claim is to consistently use the ™ symbol beside your mark, as this is how you tell the world that you are using the mark to show the source of your products/services and not simply to describe a feature of your product/service.|
|Generic||These marks describe an entire class of products/services, and are thus entirely unprotectable (because if you could register these marks it would prevent others from being able to describe what they were selling). Examples include: Aspirin, Smartphone, and email. Your mark can include a generic term, but the USPTO will require you to disclaim use of that term (e.g. “Happy Hangover Aspirin”).|
Once you have considered the strength of your potential mark(s) and decided on what mark(s) you want to move forward with, a clearance search should be performed before submitting an application to make sure you aren’t wasting your money. This involves searching the USPTO’s database for any marks that are identical or highly similar to your mark in meaning, sound, and/or appearance. However, you are only looking for matches within the category and related categories of products/services you want to register in. This is because multiple different companies in different sectors can use the same word as a mark for their products/services without confusing consumers. For example, the word Tiger is used for balm, beer, and an airline in Singapore without consumers thinking that the same company is operating or producing all three.
The purpose of the clearance search is to try to predict what might happen during your mark’s review process. The clearance searcher tries to determine whether it’s worth it for you to advance to the next step of submitting an application, or whether you should go back to the drawing board because there is another mark that is too similar to yours. This can be the painful part of the process because no one likes to be told that their top choice isn’t available. But it’s better to know sooner rather than later so you don’t spend money branding your products/services only to find out that you have to change everything.
After your mark has been cleared for application through the clearance search, the exciting part begins. First, the USPTO will require you to select both a classification and a description for your mark. There are 45 different classifications covering broad product and service types under which your mark will fit. Within each class, there are specific descriptions of types of products/services. You can select as many descriptions within a class as your mark will be used on. The USPTO charges application fees per class and not description, so one description in class 25 will cost the same as twenty descriptions in class 25. However, you will need to provide evidence (i.e. photos of your mark used on the product/service) supporting all of the descriptions you choose, so it may be better limit your choices.
After you have chosen your classes and descriptions you can then decide whether you want to submit your application as an “Intent to Use” application, or a regular application claiming “Current Use.” The main difference between the two is that the Intent to Use application does not require you to submit evidence with your application that you are actually using the mark on your products/services just yet. In other words, an Intent to Use application is essentially a reservation ticket for your mark. Once an Intent to Use application is accepted by the USPTO, you will have six months to submit this evidence, but this period can be extended by up to 30 months, if needed. Applications claiming Current Use must be submitted with this evidence upfront.
Once you submit your application it must then go through the gauntlet of review. Within three months of your submission date an examining attorney is assigned to your application. The examining attorney will look at your mark, its description, and any relevant evidence you may have submitted. They will try to find reasons to reject it (the reasons they can find are myriad and beyond the scope of this article). If they find any issues with the application itself they will issue an “Office Action” and require you to respond to clarify or change part of your application. If they find any reason to reject your mark, they will send you an Office Action, explain why they rejected your application, and allow you six months to submit an argument as to why they are wrong. If you fail to respond to either type of Office Action within the six-month window, your application will be abandoned and you will have to start again from scratch.
Assuming the examining attorney finds no issues with your application, they will then send the mark to be published for opposition. This is basically the USPTO’s way of asking the public for any reasons as to why the mark should not register (or forever hold your peace!). If the 30-day window for opposition goes by without anyone ruining the party, your mark will register and you will receive a shiny certificate evidencing your official registered trademark to hang on the wall (champagne is, unfortunately, not included).
By: Kieran de Terra, Esq. – 07/01/16
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