Protecting Your IP: Common Mistakes When Registering Your Trademark
designLast week we talked about the importance of registering your trademark at the federal level. Today, we continue our series on protecting your intellectual property by discussing some of the common mistakes that you want to avoid when registering your trademark.
Failing to Search for Conflicting Marks
The number one pitfall for most individuals when registering their trademark is failing to properly search for conflicting trademarks, i.e. marks that are already in use in commerce, registered at the state and federal level, or both. Prior to filing an application with the USPTO, you must first find out whether your mark is being used by and owned by someone else. Some simple steps you can take are searching the USPTO’s database, doing a simple Google search, and searching state databases in the various states where you use your trademark. If the USPTO finds that there is a “likelihood of confusion” between your mark and another already registered trademark, you risk your trademark application being rejected.
You’re probably wondering: What is “likelihood of confusion” and how can I avoid it? When you file a trademark application, the USPTO conducts a search for conflicting marks as part of the application process. Likelihood of confusion exists between trademarks when the marks are so similar and the goods or services that the trademark is used to promote are so related that consumers would mistakenly believe they come from the same source. Each application is decided on its own facts, and no strict mechanical test exists for determining likelihood of confusion. To determine whether a likelihood of confusion exists, the marks are first examined for their similarities and differences. It’s important to note that in order to find a likelihood of confusion, the marks do not have to be identical. When marks sound alike when spoken, are visually similar, or create the same general commercial impression in the consumer’s mind, the marks may be considered confusingly similar. Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion, depending on the relatedness of the goods or services.
You Registered Your Logo But Forgot Your Company Name
Many people do not realize that registering your company’s logo with the USPTO does not necessarily protect your company’s name from being used by someone else. A logo is typically considered a design mark (or stylized mark), and when registered you receive protection against others using your exact logo (as shown on your trademark application), not the words contained in the logo. This means that even if your company name is included with the logo that you registered, you may have no recourse against another company snatching use of your name—you may have common law rights; however, common law rights offer less protection than federal trademark rights.
To ensure you protect your trademark rights for you r company name, you should register your company name as a standard character (or plain-text) trademark. Standard character trademark registration offers you broader protection over the use of your company name. Standard character trademarks restrict the use of your company name in any font, color, size, etc. since the registration is based on the literal characters (or letters) contained in your trademark, not the style.
An Overly Broad Description of Your Goods and Services
An overly broad specification of goods and services can lead to the cancellation of your application. From the beginning of the application process, you must have a bona fide intent to use the mark in commerce on all listed goods and services. This bona fide intent to use the mark in commerce must exist and be attested to by oaths or declarations accompanied by specimens of use—which are discussed further below, but basically show the trademark in use on the particular goods or services that you sell. If you do not have a legitimate intent to use the trademark in a way that is consistent with the description of your goods and services, your application and registration may be subject to scrutiny by a third party trying to use your mark. It is always difficult to attack an individual’s intent, but there are certainly situations where the risk is high. For example, if your business and its marketing plans or product development materials do not show any indication that you ever intended to produce or distribute some your products that are listed in your trademark application, then you risk a third party claim against your trademark application or registration.
Further, an overly broad identification of goods and services is also more likely to trigger an initial refusal by the USPTO to register your trademark. The USPTO examining attorney that is assigned to your application will most likely issue a refusal to register if you describe your goods and services in overly broad terms.
Broad descriptions also make it more likely that your registration will be refused because of likelihood of confusion conflicts with prior registrations of similar marks covering goods and services that are identical to or closely related to those listed in your registration application.
Failing to Submit a Proper Specimen of Your Trademark
When you file your trademark application, you are required to provide a specimen with the application. The specimen is essentially an image of your trademark being used in commerce, i.e. how your trademark is presented to your customers or clients. Whether a specimen of use is acceptable to show actual use of the mark in U.S. commerce depends on whether goods or services are identified.
For goods, labels attached to the goods or appearing on the goods’ commercial packaging are usually acceptable. However, advertising related to the goods is not acceptable as a specimen of use on goods, unless it is some sort of point-of-sale material. Therefore, you shouldn’t use brochures, price lists, press releases, business cards, etc. as a specimen for your goods. Websites displaying the goods, on the other hand, are acceptable if they show the mark attached to or sufficiently close to the picture of the goods and include the necessary order information, (e.g., an order form, or a phone number, mailing address, or email address for placing order). Specimens of use for computer programs, video tapes, or movies can be photographs of a display screen projecting the trademark identifying the computer program, video, or movie, or photographs of a frame of a movie or video tape bearing the mark. For downloadable computer software, specimens showing use of the mark on your website is acceptable, but only if your website provides sufficient information to enable the user to download the software from the website.
For services, the specimen must show the mark being used in the advertising or marketing of the service being provided, e.g. a screenshot of your website, a business card, letterhead, advertisements, brochures, etc. so long as it shows the mark being used to promote your particular services and the services you’re promoting are sufficiently described on the specimen itself.
The USPTO has strict requirements regarding the specimen. Failure to include a valid specimen may result in your application being rejected.