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  • Curington Law, LLC

Do’s and Don’ts for Selecting a Trademark


Key steps in selecting a trademark include (i) developing a list of candidate marks; (ii) determining whether any other parties are using the same or a confusingly similar mark by performing searches in each jurisdiction where you plan to use the mark; and (iii) examining how the mark will be perceived by the relevant consumers in each jurisdiction of interest. A person or business entity can protect these trademarks by registering them with the United States Patent and Trademark Office. However, the rules governing the registration of trademarks can limit your choices.


Do:

  • Choose a mark that is arbitrary, fanciful, or suggestive (inherently distinctive)

  • Choose a mark that is easy to pronounce and remember

  • Consider developing a “family” of related marks


Don’t:

  • Choose a mark that is merely descriptive or generic

  • Choose a mark that has negative connotations in English (ENTERON) or foreign languages (NOVA)

  • Choose a mark that may become outdated in a few years (GATEWAY 2000)


Trademark Searching


Before selecting a mark, a trademark search to assess the existing landscape is essential. While not legally required, a trademark search can identify existing marks. Preliminary trademark searching is fairly simple, as all federally-registered and applied-for marks are searchable via the United States Patent and Trademark Office’s (USPTO) trademark database. More advanced trademark searching (also known as “full” searching) usually requires the assistance of a trademark searching service. However, that even a comprehensive trademark search has limits. For example, not all trademarks are federally-registered, and thus will not appear in the USPTO database. Additionally, reasonable minds may also differ as to whether a new mark is similar enough to an existing mark to create a risk of trademark infringement.


How Are Trademark Rights Acquired?


Unlike patent rights, which can only be granted by the government, trademark rights arise primarily through use. “Use” in this context is defined as displaying the mark on a product or product packaging that is then sold in the ordinary course of trade or used in connection with the rendering of a service. In some scenarios, such as in industries whose products require extensive research and development or lengthy regulatory approval processes, “use” can also include pre-sale use of the mark in preparation to do business.


U.S. Trademark Registration


While trademark rights arise through use rather than government decree, trademarks that are not federally-registered are limited to the territory where the mark is actually used or the territory to which the trademark owner’s reputation extends. Trademark owners can obtain additional benefits by registering their trademark with the U.S. Trademark Office. Some of the benefits of federal trademark registration include:


  • Publication of the mark in the USPTO database, making it easy for others to find through a preliminary trademark search

  • USPTO refusal to register confusingly similar marks without any action by the registrant

  • Nationwide notice of ownership

  • Nationwide, rather than territorially-limited, rights of use

  • Evidence of validity and exclusive ownership

  • Right to use the ® symbol

  • Right to sue in federal court and, in some cases, obtain treble damages and attorneys’ fees

  • Right to block imports that infringe the mark or that are counterfeits

  • Entitlement to statutory damages in the case of counterfeiting

  • A basis for foreign trademark registrations


To register a mark with the USPTO, filers may use either a use-based application or an intent-to-use (ITU) application. Generally, the application must contain three elements:


  • A drawing of the mark

  • Identification of the goods or services associated with the mark

  • A specimen showing the mark as actually used in U.S. commerce with goods or services


After filing, the application will be assigned to an examining attorney at the USPTO who will review its compliance with trademark laws and raise any issues or concerns he or she may have. Some common barriers to registration include issues with the wording used in the identification of the goods or services and conflicts with prior registrations or applications. If the examining attorney refuses the application, the applicant may respond with legal arguments as to why the examiner’s refusal is erroneous or amend the application to bring it into compliance with the examining attorney’s specifications. Once the examining attorney approves the application, it is published, beginning a 30-day period during which third parties may file an opposition to the registration. If a registration issues, as long as the mark continues to be used in U.S. commerce, the registrant may renew the registration every 10 years, potentially forever.


In addition to refusing to register a mark based on the prior rights of others, the USPTO also considers several types of marks to be categorically unregistrable. These are:


  • The flag or other official insignia of the United States, any U.S. state, or any foreign country

  • The name, likeness, or signature of any publicly recognized living individual without the individual’s consent

  • Terms that are deceptive or that falsely suggest a connection with any person, place, or thing


Terms that were deemed to be “immoral, scandalous, or disparaging” were unregistrable until the Supreme Court recently struck down that provision as violating the First Amendment’s guarantee of freedom of speech. See Iancu v. Brunetti, 139 S. Ct. 782 (2019).



For more on trademarks, contact Curington Law, LLC at 312 803-1755 or online.


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