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5.0 Deciding on a trademark or service mark can be a difficult task.  Knowing some basic principles of trademark law can make the job much easier.

5.1. Strength of a Mark

5.1.1 Some marks are stronger than others and therefore easier to prosecute (register) and later protect.  The courts have established a framework with which to analyze the strength of a mark:

5.2.2 Generic Marks  are marks that are nothing more than the common name for the particular product or service they are supposed to represent.

5.2.2.1 An example of a generic mark is a plant store I used to know called “Plants.”

5.2.2.2 Generic marks are never registerable as trademarks or service marks.  The reason for this is that allowing the user of such a name to exclude others from using that generic name would, in effect, grant that user a monopoly on that particular class of goods or service, since a competitor would not be able to describe its goods or services as what they are.

5.3 Descriptive Marks are marks that contain information about a characteristic, quality, purpose, component or other property of the product or service to which the mark is applied.

5.3.1 An example of a mark held to be descriptive is Quik Print for high speed printing and duplication services.

5.3.2 Descriptive marks are initially ineligible for federal registration as a trademark or service mark, but may become registerable later if secondary meaning to the consumer is developed along with use of the mark.  Secondary meaning can be difficult to prove and usually involves hiring a firm to perform a survey of the mark, which is normally quite expensive.

5.3.3 I have observed that many clients’ initial inclination is to choose a mark as descriptive as possible.  The task of protecting a mark would, in virtually all cases, be easier, far less expensive and result in an eventual stronger mark if a mark in one of the next two classes had been chosen instead.

5.4 Suggestive Marks are marks that include a certain amount of information about the goods or services the mark represents, but “require imagination, thought and perception to reach a conclusion about the nature of the goods” or services.  Suggestive marks are registerable without having to prove secondary meaning.

5.4.1 An example of a suggestive mark is Orange Crush® for the well known orange flavored soft drink, or Citibank® for banking services.

5.4.2 There can be fine line between descriptive and suggestive marks and this is due, at least in part, to the reality that the decision in deciding which mark falls into which category (Trademark Examining Attorneys, Trademark Appeal Boards, Judges, Juries) are all made subjectively by human beings.  I have sometimes been surprised by marks that initially looked to me to be descriptive were allowed without any comment regarding descriptiveness.

5.5 Arbitrary/Fanciful Marks, as are suggestive marks, are registerable without having to prove secondary meaning.

5.5.1 Arbitrary marks are existing, real words applied to a good or service that is completely unrelated to the good or service.

5.5.1.1 An example of an arbitrary marks is the Omega Plumbing Company (fictitious) for plumbing and heating services.

5.5.2 A fanciful mark is a made up term with no meaning.

5.5.2.1 An example of a fanciful mark is KODAK® for photographic products (and possibly services) and XEROX® for copy machines.



6.0 Selection of a trademark or service mark (see above)

6.1 Determine if the mark has been actually used in commerce or should be filed as “intent to use” (meaning the mark has not yet been used in commerce, but is expected to be in the foreseeable future)

6.2 Draft trademark or service mark application

6.3 File trademark or service mark application with the U.S. Patent and Trademark Office

6.4 Receipt of Official Filing Receipt

6.4.1 A formality informing the applicant that the application has been accepted by the Office and is not deficient in any way

6.4.2 This usually takes several weeks

6.5 Examination

6.5.1 An Examining Attorney will conduct search to determine the closest existing marks.

6.5.2 The standard that will be applied is likelihood of confusion, meaning that an ordinary observer would not be confused between the applicant’s mark and the similar goods or services of another [check this one out]

6.5.3 Descriptiveness (see above)  If the Examining Attorney has a problem with descriptiveness, in some cases the application will need to be amended to overcome this rejection.  In other cases the applicant’s attorney is able to successfully argue against a descriptiveness rejection.

6.5.4 Publication  Assuming the application is clear of an likelihood of confusion and descriptiveness problems, a Notice of Publication will be issued.

6.5.4.1 The mark will be published in the Official Trademark Gazette, which is available to anyone.  A thirty day period commencing with publication allows anyone to present evidence or objections as to why they believe a particular published mark should not be registered.

6.5.4.2 If no objection is raised the applicant will receive a Notice of Allowance.

6.5.4.3 If an objection is raised a formal Opposition Proceeding will be begun against the applicant where both sides will have a forum to present their respective arguments for and against registerability of the mark.

6.6 Notice of Allowance

6.6.1 If the application was filed as an actual use application, the mark will be federally registered.

6.6.2 If the application was filed as an intent to use application, the applicant has six months to submit an issue fee, specimen of the mark as used in commerce as well as a Statement of Use.  The Statement of Use is an affidavit testifying to actual use of the mark in commerce and the date(s) of first actual use and first use in commerce.

6.6.2.1 If the mark has not been used in commerce within six months of the Notice of Allowance, it is possible to submit an extension of time wherein with the payment of a fee and additional six months is granted within which to pay the fee and submit the specimen and Statement of Use.  Up to five extensions of time are possible, extending the period out to three years from date of issue.  The first two or so Extensions of Time are basically routinely granted upon application, however, after that, compelling reasons need to be provided.  It should also be understood that subsequent extensions of time are progressively more expensive.


7.0 Registration and Beyond

7.1 Following federal registration there is little to do for the first five years except to monitor the field for possibly infringing usage by others.  

7.2 Section 8 Affidavit of Use  Within the fifth year after registration, assuming the mark has been continually used in an unchanged manner, it is necessary to file a section 8 affidavit, attesting to continuous use of the mark, with a fee and specimen of the mark.  If the section 8 affidavit is not timely submitted, the mark is automatically canceled and thus no longer federally registered.  The section 8 affidavit is, therefore mandatory.

7.3 Section 15 Affidavit of Incontestability

7.3.1 Successfully filing a section 15 affidavit of incontestability conveys several valuable rights, and is thus highly recommended but optional:

7.3.1.1 It is conclusive evidence of the registrant’s ownership and exclusive right to use the mark;

7.3.1.2 It is immune from attack on the basis of prior use; and

7.3.1.3 It is immune from attack on the basis of descriptivness.

7.4 Renewal

7.4.1 A federal trademark registration must be renewed ten years after the date of registration.

7.4.2 Renewal may be filed no earlier than six months prior to the ten year anniversary of registration and a three month grace period is allowed after the ten year anniversary.


8.0 Trademarks and Service Marks are potentially infinite in duration.

8.1 Trademarks and Service Marks need to be continually used in commerce or they will expire.
© Richard C. Emery
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Richard C. Emery 
Intellectual Property Attorney
3564 Rollingview Dr Suite G
Whitebear Lake, MN 55110
(651) 704-0080
Fax (651) 704-0079
rcemery@emeryiplaw.com