Trademarks, Part II

Trademarks – Cornerstone of Business Image and Goodwill Value
Part II: Selecting and Clearing Trademarks
        by Jacques M. Dulin, Esq., Innovation Law Group, Ltd.

          Trademarks have incredible value and importance to businesses as they are the means to “bank” the value of business identity, image and goodwill built-up over time. But these key and valuable business assets can be misused, lost, trivialized or diluted through misunderstanding of their value and use. This article is the second in a series of three that form a “clip-&-save” primer for all businesses, be they start-ups, sole proprietors or established area companies, whether selling goods or services.

          In the first article I described what a trademark is and the benefits of Federal Registration. In this article I describe the process of selecting and clearing a trademark so it can be adopted for use. The first step is selecting a word, phrase, logo, design or slogan that uniquely identifies your goods or services, and finding out if it is available for use. The trademark must be unique enough to be able to earn customer recognition or have already earned customer recognition. This is called “distinctiveness.” That is, the mark should be capable of distinguishing the goods or services from others.
          The strongest trademarks (from the perspective of having to enforce them in a court action) are fanciful or arbitrary marks – words previously unknown to the average consumer such as “Polaroid,” “Kleenex,” “Xerox” and “Macintosh,” or common words that are non-descriptive of the product, such as “Apple” for computers, and “Brother” for typewriters. Suggestive marks are somewhat weaker: these marks refer indirectly to the general nature and quality of the goods and services, such as “Gamma” for photo services, “Shear Elegance” for a hair salon.
          Merely descriptive words don’t function as a trademark; e.g., “The Chair Shop” for a shop that sells chairs. However, “The Chair Shop” for a bar could acquire distinctiveness sufficient to qualify for Registration. How “good” a mark is, is another – purely business – question.
          No trademark will be granted to deceptively misdescriptive names (e.g., “Irish Linen” made in Brooklyn). Trademark protection is likewise not available to product or company names that encompass other trademarked names (e.g., “Fordson” for cars; “Microsoftware” for computer software).
          While registering a trademark gives you the right to exclude others from using the mark, the USPTO does allow registration for the same trademark in different classes of goods and services by different applicants on the grounds that consumers will not be confused by goods in different channels of trade even if they are described by the same name (e.g., no confusion between “Tiffany” for jewelry, “Tiffany” for cat food, and “Tiffany” for a ceramic tile). Currently, the USPTO recognizes 45 different classes of trademarkable goods and services, ranging from chemicals to clothing; ropes to research services.
          In fact, you do not have to actually use the mark you have selected in order to start the Federal Registration process. You can select, check availability by a clearance search (see below) and file an Intent-to-Use (“ITU”) Application. This is important to new businesses just starting up and to businesses in early stages of new product or service development.
          In the opening example (article 1 of this series) of the Olympic Hockey League, once you select several trade names, they should be searched to see if they are available, then file an ITU application on each, even before you begin your business operations and before the first game. It would not do to have your first game of the Forks Flyers called off because the National Hockey League sent a Cease and Desist letter on behalf of the Philadelphia Flyers.
          Thus, an ITU application lets you start the application process, thereby establishing some priority of use rights, before you put all that money into marketing and business development. Once the ITU application is approved (allowed, published and no opposition filed against it), you have up to 3 years to put the mark into actual use, and file a Statement of Use with the USPTO, after which registration will issue.
          Of course, many marks are already in Actual Use (“AU”). The AU application goes through the same examination process (allowances, publication and opposition period) and then the Registration issues with no delays.
          Even for experienced trademark attorneys, predicting whether a particular product name or logo is trademarkable is an art, not a science, and none of us has a crystal ball. Before spending the time and money to file a trademark application, it is advisable to conduct a trademark search which can range from a relatively simple “knock-out” search on the Internet and an on-line search of Federal Registrations and Pending Applications, to an extensive common law search covering federal and state registrations, corporate state filings, advertising, phone book and Internet searches. These latter “full” professional searches typically cost $300-$500 to generate the search information, with the analysis and opinion by an experienced trademark attorney being extra.
          As a first step (the initial knock-out search), you can visit the USPTO website, www.uspto.gov, and search the trademark database for terms you are considering for a trademark. A good procedure is to come up with 2-4 proposed “names.” Rank them. Start search #1. If it is knocked out, go on to #2, and so on. If your own search turns up no conflicting marks, that is you are not knocked out and you want to continue, you can apply for the trademark yourself.
          However, it is advisable to seek professional advice, as the keys to clearance and registration are; 1) a professional full search; 2) a combination of years of experience in trademark matters, not the least of which is dealing with the USPTO Trademark Examining Attorneys, and up front strategy in drafting the application so as to anticipate USPTO grounds for refusal or opposition; and persuasive responses to USPTO Refusals to Register and Opposition Notices with citations to legal authority.

          This article is meant as information and education only, not to serve as specific legal advice or opinion. Mr. Dulin is a Registered Patent Attorney admitted to practice before the United States Patent & Trademark Office and is a member in good standing of the Bars of WA, CA, IL and VA. He is the principal of Innovation Law Group, Ltd. of Sequim, WA. He can be reached at 360-681-7305.
          ILG has represented many local, regional and national companies and individuals in trademark matters for many years, including: The 3 Crabs; Olympic Cellars Winery; InsideOut Solutions; Present Events; Jace the Real Estate Company; Haven Trapping Company; the San Jose Sharks NHL team; the San Francisco Bay Blackhawks soccer team; the Rhinos national roller hockey league team; Compaq Arena; Paul Harvey “The Rest of the Story;” Sweet Swing Trainer; The Keith Company; J. Lohr Winery; Mariani Packing Co; Gamma Photo Labs; Ingenuity Software; Industrial Resources; Camaraderie Cellars; Sequim Lavender Growers Association; Straddle Rack Industries; Northwest Performance Software; Archiphyte LLC; Forestry Yachts; Incident Alert Systems LLC; Middlepoint Trading Company, LLC; TP Solar, Inc.; Nexus Law Group; Vintage Hardware, Inc.; Abear Motorsports; RH2 Engineering, Inc.; Clallam Cooperative Association, Inc.; Finishing Touches & Décor Ltd.; OSP Sling, Inc.; Alpenfire Cider, LLC.; and others.


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