When You Shouldn’t Apply for Trademark Registration

First, Let’s Cover Some Very Important Basics

   Brush up on what a trademark is here.

   Trademarks are designed to allow the freedom of competition with the names of products/services, while allowing protection of the names when those products/services are too similar. AKA you can’t sell shoes and call yourself Nike because a company sells shoes with that name and started doing so way before you did, but Nike Plumbing is okay because it doesn’t sell shoes. Simply put, the name of a product/service shouldn’t confuse consumers as to who sells that product or service.

   You have what are called Common Law trademark rights in a trademark as soon as you use the trademark publicly with your products/services. Registration of a trademark strengthens those rights and makes them exclusive to you/your business throughout all 50 states. More on what specific rights registration of trademark will give you here.

The first step in any well planned trademark application is the comprehensive trademark search – if you haven’t conducted a search to determine whether your trademark has a shot at registration with the United States Patent and Trademark Office (USPTO), stop, drop, and roll. Just kidding, but you should stop reading this and go get that search done before reading on!

Why is a search so important? Mainly because of the complexity of trademark law, but also because a general Google search or a search of the USPTO trademark electronic search system (TESS) just isn’t thorough enough. Well, it could be, but you would need to spend hours upon hours searching TESS with well trained search methods and ain’t nobody got time for that.

The Issue of “Similarity” In Trademark

Next, let’s discuss the distinction between the criteria the USPTO uses to accept or refuse a trademark registration versus the criteria for infringement in the real world. The USPTO, as the office tasked with federal trademark registration, must take a very narrow view of what can be registered and what cannot. If they didn’t, it would defeat the purpose of trademarks by letting multiple businesses register the same name for the same products/services.

As a result, your trademark must have a “commercial impression” that is “distinct” from any trademarks already registered (or pending) with the USPTO in order to achieve registration. Commercial impression is a safety net for the USPTO, they can rely on this standard for anything, but most often when a mark is too similar to another mark the USPTO will say the commercial impressions are the same. There are other criteria, but we’re talking similarity in this article. Even if your trademark has an additional word that a registered trademark doesn’t, it may still be too similar if you’re seeking registration of the two word trademark for the same products/services as the registered one word trademark.

Wait, What? I Need An Example!

For instance, if you want to register Purple Banana for hats, but there is already a hat company called Banana, the USPTO might refuse your application due to its similarity to Banana.

As you can see, the USPTO must be very stringent with what they allow to achieve registration. In the real world, however, your Purple Banana branding may be way different, you may sell totally different styles of hats, and you may be in a completely different part of the country than Banana hats. Because this real world analysis is different than the one the USPTO uses, we want to now outline when it may make sense to use your mark but not seek registration with the USPTO. For example, Banana hats may 1) never notice you exist; and 2) if they do notice you, they may not feel that you are infringing on their Banana hats brand. This is where the real world standard can sometimes be much more lenient than the USPTO standard.

Additionally, if you do file a trademark application and the USPTO does refuse Purple Banana because of how similar it is to Banana for hats, you now have a written record from the USPTO stating that your mark is too similar to that mark – this could, if Banana hats decided you were infringing on their brand, serve as concrete evidence of infringement (which is going to mean you have to change your name to avoid getting sued). Obviously, that’s not good. Whereas, if you simply continue to use Purple Banana for your hats and Banana never notices (or notices and doesn’t care), well then you got to use the brand name you wanted and no one goes to court for trademark infringement (and you saved some $$ not filing the USPTO application).

Wrapping it Up

Now, by no means are we recommending that you intentionally use a trademark that is infringing on another company’s/person’s trademark. And, our Purple Banana vs. Banana is only a made up example (who would want purple banana hats!?), so it is not intended to be an accurate example of what would or wouldn’t be considered infringement. What our examples and explanations in this article are intended to illustrate, however, is that trademark is complicated and involves in depth strategy – it is highly recommended that you speak with an attorney versed in trademark law before moving forward with the use of a trademark and/or the application to register a trademark with the USPTO.


By: Sam Mazzeo – 08/28/18

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