Originally posted 2018-01-29 11:00:16

By Tikwiza Nkowane|

Applying and receiving a trademark is a daunting task and requires time and precision to ensure you do not face litigation for trademark infringement and other problems in the future.  Understanding the basic requirements of what to look for when you are considering applying for a trademark, and what the United States Patent and Trademark Office (USPTO) looks for is critical from the beginning.


1. What are you looking for when you conduct a trademark search?

When a trademark search is conducted, we look for any results that may identify potential problems, such as a likelihood of confusion with a prior registered mark or a mark in a pending application.  A search may also show whether the mark or a part of the mark appears as generic or descriptive working in other registrations, and thus is weak and/or difficult to protect.

2. What are the four categories of marks when determining the strength or weakness of a mark (also known as the spectrum of distinctiveness)?

The four categories of marks are fanciful or arbitrary, suggestive, descriptive or generic.  Each one of these has a purpose and can also be categorized as strong or weak marks and are described below.

    • Fanciful marks are invented words with no dictionary or other known meaning – Example – XEROX for a copier.

A fanciful mark is considered a strong mark, as it is an invented word and cannot be linked to anything specific and identifiable.

    • Arbitrary marks are actual words with a known meaning that have no association/relationship with the goods protected. Example – APPLE for a technology company.

Similar to fanciful marks, arbitrary marks are considered strong marks.  Take another example of the mark CATERPILLAR also known as CATThis mark produces heavy equipment and machinery, in addition to branded footwear.  It stands out as the mark has no connection to the Lepidoptera (the insect order comprising of butterflies and moths.)

    • Suggestive marks suggest, but do not describe, qualities or a connection to the goods or services.  Example – Glance-A-Day for “calendars”
    • Descriptive marks are words or designs that describe the goods and/or services. Example – World’s Best TV for “TVs”.

The USPTO generally defines these marks are weak, as they are usually used to describe the exact goods or services to be used.

    • Generic words are common, everyday name for goods and services. Example – Shoe for “shoes” or “the shoe store”.

The USPTO often refuses generic words for marks as they are common and everyday names, therefore not unique in any sense.

You can see that the more unique and obscure a mark is to describe what goods or services will be provided under the mark, the more likely the mark will be registered as a trademark.  It is clearly a creative process in finding the right mark for your product or service.

3. What is a likelihood of confusion? What factors should you analyze when determining a likelihood of confusion?

The likelihood of confusion is when the mark of the applicant and a mark already registered or in a prior-filed pending application owned by another party are similar or related goods.  This is the major factor considered by the USPTO in determining whether a mark will be registered.

The factors used to analyze whether there is a likelihood of confusion come from whether:

  • the marks are similar; and
  • the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source.

The likelihood of confusion does not mean “exact” duplication.  A mark can be confusingly similar and be different. Example – NIKE and NIKY both in the shoe category

4. What are the benefits of federally registering a mark?

When a mark is federally registered, there are significant benefits to this.  In my view, the main benefit of a federally registered mark is that a legal presumption of ownership in the mark and exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration.  This provides security and peace of mind when marketing goods or promoting services.  In addition, other benefits to a federally registered mark include:

    1. Public notice of the claim of ownership of the mark;
    2. Listing in the USPTO’s online databases;
    3. The ability to record the U.S. registration with U.S. Customs and Border; Protection to prevent importation of infringing foreign goods;
    4. The right to use the federal registration symbol “®”;
    5. The ability to bring an action concerning the mark in federal court; and
    6. The use of the U.S. registration as a basis to obtain registration in foreign countries.

5. Why is it important to conduct a trademark search?

A good and thorough trademark search can determine whether a mark can be legally protected and whether a mark of the same type has already been registered.  This will assist with ensuring that there is no infringement of trademarks.

6. What is the search system the USPTO offers to conduct a trademark search?

The USPTO offers a search facility known as the Trademark Electronic Search System (TESS).  It is a basic search and includes clear instructions that provide how to use the search.  Conducting a search on your own without an attorney is the first step to understanding what is out there for your mark.  It is always advisable that an attorney is obtained to do a more in-depth search prior to applying for registration for your mark.

7. What are some things you should keep in mind as you input search terms?

A thorough search on the TESS should include the following:

    1. Possible variations of the term
    2. If the term has another meaning when translated into a foreign language,
    3. If a foreign term that translates to a descriptive or generic term

The above is important as it can determine whether there is a possible likelihood of confusion if your mark were to be registered.  The TESS gives results of prior filed marks, pending applications and those which are live, or dead.  Reviewing each of these will allow you to see where your mark may either fail, succeed in registration, or where you may have to provide a clear distinction as to why your mark should still be registered, even if there is a mark that is similar.

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