Trademark Registration Can Benefit Organizations of Every Size (Part II)
Use “strong” trademarks.
Legal protection for trademarks exists on a sliding scale: on one end are generic descriptions of goods or services that are labels that receive no legal protection as trademarks, and on the other end are invented words and symbols that have no meaning other than as a trademark for particular goods or services—these are “strong” trademarks and enjoy the strongest legal protection.[i] The fundamental idea underlying legal protection of trademarks is that trademarks identify the source of goods or services. A strong trademark is understood either to exclusively or primarily identify the source of goods or services;[ii] a trademark is comparatively “weaker” to the extent the mark can be understood to mean something other than identifying a single source of goods or services.[iii]
Stronger trademarks are more distinctive and thus have a more powerful effect distinguishing your organization’s goods or services from others in your market or community. Recall that trademarks can be words, images, or combinations of the two, and in every case there are opportunities to incorporate elements to increase the strength of your marks.
Strong trademarks are likely to be eligible for registration with the USPTO.[iv] Generally speaking, any legally “strong” trademark that is not confusingly similar to a mark already in use for similar goods or services is eligible for registration.[v] Registering a trademark with the USPTO comes with significant benefits that we discuss further in THIS POST. The strength of a particular mark and whether it’s eligible for registration depends on its characteristics and the context in which it is used. The USPTO itself has helpful resources that offer the basics of trademark policy,[vi] and an experienced attorney can help you determine whether your trademarks are as strong as you would like them to be.
Use your trademarks consistently.
Trademarks are more effective when they’re used consistently, and if you have gone through the steps to register your marks with the USPTO or a state agency, the way you use your marks shouldmatch the registered versions. A change in the way a trademark is actually used in commerce relative to what was registered with the USPTO can put all the benefits of registration at risk if a dispute arises.
Any change to the use of a registered mark that creates a difference in the mark’s “commercial impression” effectively represents a different trademark in the eyes of the USPTO,[vii] and under federal law.[viii] Adding or removing words, design elements, or even a punctuation mark can create a different commercial impression, which can cause an application to be denied,[ix] or worse: can cause a court to determine that a registered mark was abandoned because the mark owner used a mark that was too different than what they originally registered with the USPTO.[x]
Select your trademarks with your organization’s future in mind.
Making choices about your brand and its trademarks with the big picture in mind will result in the most valuable, effective trademarks and most reliable legal protection over the long term. As soon as you begin using a trademark, you are investing in it. The easiest way to maximize your investment is to select marks that are well-positioned to be stable, recognizable, and to remain usable as your business grows.
Using a “strong” distinctive trademark that is unique to your goods or services as early as possible is a straightforward way of ensuring investments in your brand carry as much weight as possible. A successful long-view approach also incorporates avoiding descriptive terms in your trademarks like geographic areas or particular products, considering appropriateness in other languages or cultures, and thinking practically about how your organization would like or need to use your trademarks over time.
Registering a trademark according to a particular appearance and then making subtle but potentially registration-defeating changes to how it is actually used in commerce is a misstep that can be avoided with planning. For example, registering a design-based trademark without particular colors as an essential part of the mark allows for more flexibility in the future, as does registering a word-based mark without specific design elements.
Register your trademarks to get the strongest protection.
Trademarks can be entitled to legal protection without registration with the USPTO or state agencies, but registration is generally a valuable tool to boost the value an organization can derive from its trademarks. We discuss registration benefits in greater detail in THIS ARTICLE.
Consider working with an attorney to confirm your organization is using your trademarks effectively.
An attorney can be a valuable partner in helping your organization get the most out of its trademarks. Our practice regularly assists clients with trademark clearance advice, discussing protection strategies, and applying for registration with the USPTO.
[i] U.S. Patent and Trademark Office, Strong Trademarks, https://www.uspto.gov/trademarks/basics/strong-trademarks. An example of a generic and descriptive phrase that is not a trademark would be “College Street Bicycle Shop” for a store that sells bicycles on College Street; an example of a “strong” trademark consisting of an invented word that only has meaning in relation to their goods or services would be
[ii] According to Apple, Inc., there are two and a half billion Apple devices currently in use throughout the world. As a result, there are contexts where the word “apple” is much more likely to describe the source of a product or service than a food.
[iii] A detailed discussion of all the principles that go into trademark “strength” is outside the scope of this article, but can be summarized as follows: there are two forms of trademark strength; “conceptual strength” and “commercial strength.” Conceptual strength describes how inherently distinctive a mark is; for example, a made-up word like “Exxon” or an abstract design like the Nike “swoosh” are conceptually unrelated to automotive fuel and sporting goods—or anything else for that matter—and are inherently distinctive as a result. Commercial strength describes the degree to which consumers have become familiar with a trademark through its use; “Apple” has become one of the strongest trademarks in the world over time as the popularity of its products has increased and its reach has expanded around the world.
[iv] U.S. Patent and Trademark Office—the federal agency responsible for administering trademark registration and issuing patents.
[v] For more detail on eligibility, see these USPTO resources: Strong Trademarks, https://www.uspto.gov/trademarks/basics/strong-trademarks; Possible Grounds for Refusal of a Mark, https://www.uspto.gov/trademarks/additional-guidance-and-resources/possible-grounds-refusal-mark.
[vi] Trademark Process, https://www.uspto.gov/trademarks/basics/trademark-process; Trademark Basics, https://www.uspto.gov/trademarks/basics; Strong Trademarks, https://www.uspto.gov/trademarks/basics/strong-trademarks.
[vii] In Re Lee Greenwood, No. 87168719, 2020 WL 7074687, at *11 (TTAB Dec. 1, 2020) (precedential), publicly available at https://ttabvue.uspto.gov/ttabvue/ttabvue-87168719-EXA-19.pdf
[viii] Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1368 (Fed. Cir. 2015).
[ix] In In Re Guitar Straps Online, LLC, 103 U.S.P.Q.2d 1745 (TTAB 2012), a company applying to register a trademark found their application denied because of the addition of a question mark relative to the original applied-for mark. The Guitar Straps Online decision is publicly available at https://ttabvue.uspto.gov/ttabvue/ttabvue-85047191-EXA-19.pdf.
[x] Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1369 (Fed. Cir. 2015) (“We hold that the same legal standard applies in both contexts. Accordingly, when a trademark owner uses a modified version of its registered trademark, it may avoid abandonment of the original mark only if the modified version ‘create[s] the same, continuous commercial impression.’”); Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., 84 U.S.P.Q.2d 1856, 2007 WL 2422997 (T.T.A.B. 2007) (use of a two-word mark written in a semi-circle was not an abandonment of the same words registered as two words on two lines).
