Trademark Law Outline

Trademark Law Outline

Trademark Law Outline

By: Samuel A. Houghton, Esq.


How do I trademark my brand?

  • Search to be sure there are no other products or services that are likely to confuse the customers. Use TESS, Design Search Code Manager, and also search for unregistered marks.
  • Use it. – Sell the product or advertise the service with the exact brand that you plan to trademark.
  • Register – Using TEAS online at the USPTO site.
  • International Trademark

What prerequisites must a mark satisfy in order to serve as a trademark?

  • In order to serve as a trademark, a mark must be distinctive — that is, it must be capable of identifying the source of a particular good or service. In determining whether a mark is distinctive, the courts group marks into four categories, based on the relationship between the mark and the underlying product:
    • Descriptive (not inherently distinctive) – needs “secondary meaning” to be accepted. Example: Holiday Inn.  To determine whether secondary meaning exists, courts look at the following:


      1. the amount and manner of advertising;
      2. the volume of sales;
      3. the length and manner of the term’s use;
      4. results of consumer surveys

    • Suggestive (inherently distinctive) – Suggestive of an underlying good. Example: Coppertone.
    • Arbitrary or fanciful (inherently distinctive) – Bears no logical relationship to the underlying product. Example: Adidas.
    • Generic (not distinctive) – Example: Printer.


How different does my trademark have to be, compared with others?

(Answer from USPTO)

After an application is filed, the assigned examining attorney will search the USPTO records to determine if a conflict, i.e., a likelihood of confusion, exists between the mark in the application and another mark that is registered or pending in the USPTO. The USPTO will not provide any preliminary search for conflicting marks before an applicant files an application. The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:


  1. the similarity of the marks; and
  2. the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related.

If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.


How do you acquire rights in a trademark?

You acquire rights in a trademark by being the first to use the trademark or by filing an intent to use trademark with the PTO. Use of the mark gives you priority to sell a particular product or service with a particular mark.  The priority is limited, however, to the geographic area in which the products or services are sold, along with any expected areas of expansion.   One benefit to registering the trademark is that it gives the party the right to use the mark nationwide, even if actual sales are limited to only a limited area. This right is limited, however, to the extent that the mark is already being used by others within a specific geographic area.


Benefits to registering a trademark?

  • Right to use the mark nationwide, subject to the limitations noted above.
  • Registration constitutes nationwide constructive notice to others that the trademark is owned by the party.
  • Registration enables a party to bring an infringement suit in federal court.
  • Registration allows a party to potentially recover treble damages, attorneys’ fees, and other remedies.
  • Registered trademarks can, after five years, become “incontestable,” at which point the exclusive right to use the mark is conclusively established.


How can trademark rights be lost?

  • Abandonment – when its use is discontinued with an intent not to resume its use. 3 years of non-use is prima facie abandonment.
  • Improper licensing or assignment – when a trademark is licensed without adequate quality control or assigned to another party without the additional assignment of assets.
  • Genericity – This happens when the minds of a substantial majority of the public think that the word denotes a type of products. Example: Aspirin.
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