Before You Brand
By Desirée Townsend
Many new companies and start-ups jump the gun and move straight into purchasing a domain name, branding, and marketing before ever running a proper trademark search. The issue with this approach is it can lead to three potential pitfalls:
Infringing on another trademark.
Inability to secure a registered trademark with the USPTO.
A trademark name that is weak, descriptive, or lacks strong protection powers.
Trademark infringement is synonymous with what the U.S. Patent and Trademark Office (USPTO) refers to as "Likelihood of Confusion." When a trademark application is reviewed at the USPTO, they are assessing the potential of consumers confusing that trademark for another trademark. If a trademark is confusingly similar to another with related goods or services, consumers are more likely to mistakenly believe these goods or services come from the same source.
This is the most common reason for the USPTO refusing registration on trademark applications, and grounds for filing a trademark infringement case.
Trademarks do not have to be identical to be confusingly similar. See the USPTO's article on Likelihood of Confusion for examples. They can just be similar in the pronunciation (sound), in how they look (appearance), or in the overall meaning or translation to create a similar commercial impression.
Likelihood of confusion is determined by applying factors set forth in In re E.I. du Pont de Nemours & Co which are now commonly referred to as the “DuPont Factors.” Although not all DuPont factors may be relevant, the first two are the key considerations in any likelihood of confusion analysis at the USPTO:
Before purchasing a domain name, or investing in branding, it is important to determine the likelihood of getting a trademark through the USPTO, and more importantly, the risk of that trademark infringing when you enter the marketplace.
The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.
There are a few elements that determine the strength and potency of a trademark within the marketplace. When deciding upon a name for a brand here are some helpful things to consider:
A trademark that is descriptive of the goods, services, or location of the company or brand does not carry much enforcement power. In fact, descriptive trademarks can be outright rejected at the USPTO.
Here are some examples of trademarks that have been rejected at the USPTO:
USPTO Refusal: Registration was refused because the applied-for trademark is a slogan or term that does not function as a trademark.
Class 041: Educational testing services; Analyzing educational tests scores and data for others
USPTO Refusal: Registration is refused because the applied-for mark is generic for applicant’s services.
Class 035: On-line retail store services featuring dietary supplements
USPTO Refusal: Registration is refused because the applied-for mark merely describes a characteristic of applicant’s services.
Class 035: Public advocacy to promote awareness of river conservation in California.
Disclaimer Requirement: Applicant must disclaim the wording RANK because it is merely descriptive of a feature, purpose, or use of applicant's services.
Class 035: Marketing consulting; Marketing services; Search engine optimization for sales promotion
Disclaimer Requirement: Applicant must disclaim “BROS” because such wording appears to be generic in the context of applicant’s goods.
Class 030: Coffee
Disclaimer Requirement: Applicant must disclaim the wording “PAY” because it is not inherently distinctive.
Class 035: Electronic payment services, namely, providing, processing, verifying, and authenticating payments, credit and debit card transactions, and bill payment transactions with retailers, merchants, and vendors;
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