Many find that trademarking their designs, logos, and goods or services is a smart way to protect their intellectual property and ensure their business stands out. While the trademark registration process can be daunting, especially the first time around, CopyCat Legal is here to provide some tips on navigating the process to ensure your registration goes smoothly and your hard work is protected.
Is My Trademark Too Generic?
The USPTO will reject a trademark application if they deem a phrase or product name too commonplace in everyday speech. If the term doesn’t give a consumer insight into the source of your product beyond the commonly agreed upon meaning of the phrase, you may struggle to get your trademark registered. In fact, Marvel Characters, Inc. and DC Comics recently saw their trademarks on the phrase “Super Heroes” cancelled by the USPTO after a lawsuit was filed arguing the term was too generic and applied to an “entire genre” rather than as an identifier for a source of goods. By making your trademark unique, you not only facilitate your registration but also ensure your brand stands out.
What is a Likelihood of Confusion?
The most common reason the USPTO will reject a trademark application is in the instance of a likelihood of confusion. This occurs when the sound, appearance, or commercial impression of a trademark is similar enough to another trademark to reasonably induce confusion on the part of the consumer. Even brand names using different spelling or stylizations can be confused if they are pronounced the same or share a “dominant design element.” However, just because a name might be similar (or in some cases exactly the same), there may not be a likelihood of confusion if the goods or services are unrelated. Similar trademarks for related services or goods that are commonly advertised or sold together, such as pens and markers, have a higher chance of being confused than similar trademarks for pens and airplanes. A smart way to test your trademark for a likelihood of confusion before registering is to run a clearance check by searching trademark databases and publications or consulting with a patent attorney.
What Should I Submit as My Specimen?
The USPTO defines a specimen as “a sample of your trademark as used in commerce” and it is generally required when submitting an application. A specimen should exhibit how your trademark is used to provide your goods or services and is different than the drawing of your trademark (which is also a requirement in your application). Make sure your specimen is a real-life example of your trademark and not a render or mock-up drawing of how it will eventually be used. Submitting a photo of your trademark appearing on your product, a tag, packaging, online point-of-sale, displays where your product is being sold, or an app store are just some examples of specimens that can be submitted along with your application. What if your trademark is for a service rather than for a good? Don’t worry! Business cards, invoices, menus, and advertisements are also acceptable specimens.
Now that you have your specimen, it is crucial that your trademark is not obscured or altered in your application. It is also important for your specimen to correspond to your goods or services listed in your application. For instance, if you listed your goods as stuffed animals, your specimen would not be an ad promoting your stuffed animal business service, but instead a picture of how your trademark is used on your actual stuffed elephant. Always check that your specimen shows your trademark being actively used on your goods or actively used to sell your services as the USPTO will not accept specimens that are promoting pre-sales of a product, mock-ups, or just a depiction of your trademark.
Registering a trademark is a significant step in a business owner’s career though the process can sometimes leave one feeling overwhelmed. It is always smart to review the USPTO website before and during the trademark process for further examples and frequently asked questions. Now that CopyCat Legal has swooped in to offer some helpful tips on getting your trademark registered, we are off again to continue helping our clients protect their registered trademarks and copyrighted work.
Disclaimer: The information contained on this blog post is provided for informational purposes only and should not be construed as legal advice on any subject matter.