While there are many factors that determine whether or not a particular brand or mark can be registered with the U.S. Patent and Trademark Office, the three most important factors are distinctiveness, likelihood of confusion, and use in interstate commerce. Your brand must be distinctive, this is a legal term of art that will be described later. Also, your brand must not confuse consumers into thinking your brand is represents some other entities goods or services. And finally, you must actually be using your mark in commerce.
It is generally accepted that there are five levels of distinctiveness. They are listed below from most distinctive to least distinctive.
- Artful/Fanciful: This level is the most distinctive. They are words that were invented to represent the product or service. The words have no meaning other than the invented meaning. Examples include: Xerox, Google, Kodak, Bidzuku.
- Arbitrary: These are words that have a dictionary meaning, but that meaning does not relate to the product or service. The most notable example of this is ‘Apple’ for a computer company.
- Suggestive: These are marks that ‘suggest’ what a product is by the name. These marks are more than just ‘merely descriptive’ of the product and are considered distinctive by the Trademark Office. Be careful because these levels are subjective and what may be suggestive to you could be merely descriptive to the Trademark Office. Examples include: Citibank, Playboy, and Mustang.
- Descriptive: These are marks that merely describe the product or service. While there are methods for registering descriptive marks, for all intents and purposes, these marks are not distinct enough to be registered with the Trademark Office. Also note that surnames usually fall within this level. Examples include: Qik Print, Eyeglass Superstore, Chinese Restaurant.
- Generic: These marks merely describes the category of goods or services. These marks are not protected. E.g. Food, Restaurant, Computer.
For you to register your mark, the United States Patent and Trademark Office (USPTO) must determine that your mark is at least suggestive. While there are ways to register a descriptive mark, that is outside of the scope of this post.
Likelihood of Confusion
Your brand cannot mislead or confuse consumers. This usually occurs when your mark is the same or similar to existing trademarks. For example, it might be possible for two companies to use the mark ‘Apple’ if one was selling computers and the other was selling teaching supplies. Conversely, even if the mark is different, if it is similar enough and in the same or similar class, consumers may still be confused. For example ‘Teachbook’ may infringe on ‘Facebook’s’ mark. Even if there is not a similar mark registered with the U.S. Trademark Office, there may still be uses of your mark that will affect your rights. Trademarks can also be filed with a state or acquired through use (this is called a common law trademark). While these marks may not preclude you from registering with the U.S. Trademark Office, they can prevent you from using your mark where they have priority over your mark. This is why a good trademark search is vital before attempting to register your mark.
Use In Commerce
This is another term of art, but it basically means that the mark is actually being used to sell goods or services. Thus if you are still in the planning phase of your project, you cannot get a trademark. You must actually be using the mark. However, there is an ‘Intent to Use’ application that can be filed when you know you want to use a mark, but are not yet using it. This does not grant you any actual protection, but it will provide a record of your use of the mark if you are worried someone might try to steal your brand. If you do file an Intent to Use application, you will still be required to file an actual registration to obtain any rights.
This is just a general overview of some of the key issues when it comes to eligibility to receive a U.S. Trademark Registration. Your specific situation will affect if your mark can be registered. If you have any questions, please feel free to contact us here.