Protecting Your Trade or Service Mark

A recent story about canned unicorn meat got us thinking about trademarks. The National Pork Board sent a 12-page cease and desist letter to ThinkGeek, insisting the Fairfax-based retailer stop marketing its fictitious product under the slogan “the new white meat”.  At issue is the trademark THE OTHER WHITE MEAT® which the National Pork Board has been using since 1986.

We find trademark protection is often misunderstood. Business owners sense that their trademarks are valuable and should be protected but they are fuzzy as to how and why. The #1 misunderstanding we hear is that owning a trademark means that nobody else can use it. There is also confusion as to what a mark really is, how it functions, and what benefits Federal registration actually provides.

What Exactly is a Trademark?

First, let’s be clear about what a trademark really is. A trademark is “a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others” (see Basic Facts About Trademarks). A service mark is the same thing; it just applies to a service as opposed to a product.

Note the wide range of words and symbols that can be protected—nearly anything goes including sounds (NBC chimes), colors (UPS brown) and, under the right circumstances, décor (McDonalds). Also note the emphasis on the origin of goods or services. The trademark registry exists to prevent consumer confusion, not to provide businesses with intellectual property rights. If you are not actually providing goods or services, you have no basis for registering a trademark.

Perceived and Actual Protections

In our experience, clients are usually looking for a guarantee of exclusive use.  No such guarantee exists.  Consider this example:

\"TheA pie maker inspired by fluffy cumulus clouds captures their form in a special meringue. “When I trademark ‘Cumulus’,” he thinks, “only my pies can be called by that name. There will be no other ‘Cumulus’ in the marketplace.”

Guess what? The same mark is already registered and other businesses are using it to sell everything from rain suits to fishing rods to bonded polyester fiberfill.

Why Bother to Register?

The United States Patent and Trademark Office (“USPTO”) neatly distills the actual benefits of Federal registration in its Basic Facts about Trademarks:

  • constructive notice to the public of your claim of ownership of the mark; a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
  • the ability to bring an action concerning the mark in federal court;
  • the use of the U.S registration as a basis to obtain registration in foreign countries; and
  • the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

Federal registration isn’t the only game in town. State- and local-level registrations are also a good safeguard and you actually start gaining protection for your mark the moment you begin using it.

Use It or Lose It

Occasionally, a client will request that we register a mark to “reserve” it for later use. While it is possible to submit an application for a mark on the basis of “intent to use,” the registration cannot be completed until the applicant demonstrates use of the mark in commerce. If you aren’t using your mark in commerce—and that means any “commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country” according to the USPTO—don’t expect a favorable outcome.

Refine Your Mark

If you are still mulling over exactly what mark to register, consider these two paramount points:

1. Be different.

“Likelihood of confusion” is the single most important consideration for Federal trademark registration. Simply put, would a typical consumer confuse your mark with another existing, registered mark? You would be very surprised how many business owners have the same great product name idea—or even last name—as you. Do your homework and see what’s out there.

Even if you have chosen a sufficiently unique identifier, you may encounter unexpected pitfalls in the registration process. When we sought protection for “Pete’s Apizza,” the USPTO examining attorney decided consumers might confuse it with an existing mark: the PIZZA!PIZZA!® slogan owned by Little Ceasars.  (Apizza, for the record, is pronounced ah-BEETS.) Our client is now registered as “Pete’s New Haven Style Apizza” and we promise that if you try their pie, the likelihood that you will confuse it with Little Caesars’ product is nil.

2. Avoid being merely descriptive.

It is essential for marks to serve as unique identifiers rather than simply descriptions of the product or service. Think “post-nasal drip removal aid” (bad) versus “Kleenex” (good). That’s not to say that description is a no-go; just remember to add a unique identifier. “Accounting Services” would never make it through the application process but “Wimbley’s Accounting Services” will fare better.

Manning Sossamon Can Help

We have assisted our clients with dozens of successful Federal trademark applications. We will be happy to help assess your chances for a favorable trademark application and can handle the entire process from start to finish. Contact us to get started.