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Trademarks

Branding is crucial for any business striving to stand out in a competitive market. Trademarks provide legal protection for a brand’s unique symbols, names, and slogans. A trademark is “any word, phrase, symbol, design, or a combination of these things that identifies your goods or services.”

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41.3%

is the current first office action allowance rate of TEAS Plus trademark applications

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Branding elements that can be trademarked include:

  • Company names

  • Product names

  • Logos

  • Slogans and taglines

  • Color schemes

  • Sound schemes 

  • Scents

  • Packaging

 

Elements that can’t be trademarked:

  • Generic or descriptive words

  • Geographic terms

  • Conflicting terms that are likely to cause confusion

What Can Be Trademarked

Strength of a Mark

The strength of a branding element or mark can determine its suitability to function as a trademark.

STRONG
WEAK

Descriptive

These terms are considered the weakest marks because they describe the quality or purpose of their goods or services. For example, the mark COLD AND CREAMY is descriptive of ice cream.

Arbitrary or Fanciful

These terms are considered the strongest marks because they require a mental leap to associate that mark with their goods and services. For example, KODAK is an arbitrary term, and APPLE is a fanciful term for electronics.

Suggestive

These terms are considered the second most substantial marks because they allude to the nature or features of their goods and services without explicitly describing them. For example, the mark NETFLIX is a suggestive term for streaming services.

Generic

These terms cannot function as trademarks because they are commonly used to describe a good or service. For example, the term "bicycle" is a generic term for many types of bicycles.

Establishing Trademark Rights in the U.S.

In the U.S., trademark rights may be established based on common law or on a federal registration.

Common Law

These trademark rights are established automatically when a mark is used commercially to identify goods and services. Common law rights may be limited to specific geographic areas of use, and proof of mark ownership may prove difficult.

Federal Registration

These trademark rights are established by filing an application for trademark registration with the United States Patent and Trademark Office (USPTO). If the trademark application is approved, a registration certificate for the mark with the identified goods and services is issued. The trademark registration provides exclusive rights to the trademark throughout the U.S. for the identified goods and services.

Enforcing Trademark Rights

Monitoring the marketplace to detect trademark infringement is essential. If your trademark is being infringed, a cease-and-desist letter may be sent to the infringer requesting that the infringing activity be stopped. Sending this letter puts the infringer on notice and hopefully initiates negotiations. If the activity continues, a cause of action for trademark infringement may be filed in federal court for registered marks and in state court for common law marks.

A registered trademark may also be recorded with the U.S. Customs and Border Protection agency to help prevent the importation of goods that infringe on your trademark.

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Madrid Protocol

A Madrid Protocol application provides for extending a home country application (US) or registration to over 120 member countries using a single application.

A Madrid Protocol application specifies the goods and services associated with the trademark in the home country and indicates the member country where protection is sought. It is submitted to the World Intellectual Property Organization (WIPO) through a home office (USPTO). WIPO examines the application, and once approved, the trademark is registered and published in the WIPO Gazette of International Marks. The registration is then forwarded to the selected member countries for prosecution in each country.

The Uniform Domain Name Dispute Resolution Policy (UDRP) can be used to contest the registration of domain names that infringe existing trademarks.

A UDRP complaint needs to meet the three following requirements:

Domain Name Resolution

1.

The domain name in question must be identical or confusingly similar to a trademark to which the complainant has rights.

Once a UDRP complaint is submitted, a dispute resolution service provider assesses its validity, and a panel is appointed to decide whether the complaint is valid. The panel's decision can lead to the transfer or cancellation of the domain name registration.

3.

The domain name must have been registered and is being used in bad faith.

2.

The domain name registrant must have no rights or legitimate interests in the domain name.

How TCP Law Can Help

Employing the services of a trademark attorney at TCP Law can significantly help develop your branding strategy and enforce your trademark rights. A trademark filing engagement will typically include (a) providing you with a well-crafted trademark disclosure form to complete, (b) performing a knockout search of the mark and reviewing the result with you, (c) drafting and reviewing with you an identification of the goods and services associated with the mark, and (d) preparing and filing your trademark application with the USPTO.

 

If you have any questions regarding general trademark issues or want to discuss your specific trademark matter, please contact me at john@tcplawfirm.com or at 917-612-1059.

Establishing trademark rights based on federal registration requires the prosecution of a trademark registration application before the USPTO.

 

Trademark prosecution involves the following stages:

Trademark Prosecution