Category: Trademarks

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What are the Benefits of a Federal Trademark Registration?

U.S. federal law recognizes trademark rights even without a federal trademark registration. 15 USC 1125(a). Unregistered trademark rights also may exist under state common law. Unregistered trademark rights generally are acquired by using a mark as a source identifier in the sale or provision of goods or services.

If you can obtain trademark rights by simply using the mark without registering the mark, why bother seeking a federal trademark registration? The short answer is that a federal trademark registration strengthens the trademark owner’s rights and provides numerous benefits that are not available without a registration. The long answer is as follows.

Nationwide Protection

Common law rights extend only to the geographic areas where the mark is used in connection with providing goods or services. By contrast, a federal trademark registration provides nationwide rights in the mark, assuming you were the first to use it in connection with your goods or services, without requiring you to provide those goods or services throughout the country. 15 U.S.C. §§ 1057(b), 1115(a).

In a trademark lawsuit, establishing common law rights typically requires you to prove the geographic scope of your use of the mark, including your sales. Gathering evidence of that geographic scope can be burdensome. By contrast, if you have a federal registration, you may be able to rely at least in part on the registration’s nationwide protection without having to show use throughout the United States.

Avoid the Race to Market: Priority Against Later Users

Filing a trademark application that ultimately matures into a registration gives the owner priority as of the application’s filing date.

15 U.S.C. §1057(c) provides in part “Contingent on the registration of a mark on the principal register provided by this chapter, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except [prior users of the mark, and prior trademark application filers].”

Therefore, the filing of a trademark application that becomes a registration, provides the owner with superior, priority rights, against users that start use of the mark or that apply to register the mark after the owner’s application is filed.

If you are not using the mark yet, you do not have to rush to establish trademark rights through use. Instead you can file an intent-to-use trademark application. If that application later matures into a registration, it can provide superior rights, assuming the mark is otherwise registrable, against users who begin using the mark after the application is filed, even if those later users begin use before you do.

Persuasive Power of the Registration Certificate

The registration certificate is prima facie evidence of the validity of the trademark owner’s exclusive right to use the mark in commerce in connection with the goods and services identified in the registration. 15 U.S.C. § 1057(b). If you need to send a cease and desist letter to an infringer, attaching a certificate of registration can make the demand more persuasive, particularly for recipients who are unfamiliar with common law trademark rights, as compared with asserting rights based solely on use without registration.

Provides Constructive Notice of the Registrant’s Ownership Claim

A registration provides constructive notice to others of the owner’s claim of ownership of the mark. 15 U.S.C. §1072. Constructive notice means that others are deemed to have known about the owner’s claim of ownership, even if they did not actually know of it. This can strengthen the owner’s rights in a dispute.

Strengthens Trademark Rights Over Time

A trademark registration that has been registered for more than five years is no longer vulnerable to certain validity challenges, including descriptiveness. 15 USCS § 1064. As a result, a long-held registration may eliminate some defenses that an alleged infringer might otherwise raise. That, in turn, strengthens the trademark owner’s position.

In addition, after five years of registration, a trademark owner has an opportunity to obtain the status of “incontestability” by filing a Section 15 declaration provided that, among other requirements, the mark has been in continuous use for five years. Once a mark becomes incontestable, it can no longer be challenged on certain grounds. 15 U.S.C. §§1065, 1115(b)

Customs Assistance Against Importation of Infringing Goods

A federal trademark registration enables the owner to obtain the assistance of the U.S. Customs and Border Protection to prevent importation of infringing foreign goods from abroad. 15 U.S.C. §1124.

First Step to Simplified Foreign Trademark Protection

A federal registration provides a basis for using the Madrid Protocol’s streamlined process to seek trademark protection in foreign countries. 15 U.S.C. §1141b. To file a Madrid protocol trademark application at the USPTO seeking protection in foreign countries, you must first have a pending U.S. trademark application or an active U.S. registration for the mark.

Defense to State and Common Law Dilution Claims

A federal trademark registration is a defense to state or common law claims of trademark dilution. 15 U.S.C. § 1125(c)(6).

Court Characterization of Registration Benefits

The Supreme Court said “Federal registration …. confers important legal rights and benefits on trademark owners who register their marks.” The Federal Circuit Court of Appeals has likewise observed, “These benefits [of a federal trademark registration]–unavailable in the absence of federal registration–are numerous, and include both substantive and procedural rights.”

If you are serious about protecting your mark, consider registering it on the principal register.

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Insufficient Explanation of Confusion and Plaintiff’s Products Dooms Schedule A Trademark Case

Plaintiff’s motorcycle championship trademark claims in a Schedule A case ran out of gas at default judgment because they lacked sufficient factual detail. The complaint alleged that the defendants’ use of plaintiff’s MOTOGP trademarks to sell counterfeit products caused confusion. But, the complaint failed to provide facts explaining how or why a consumer would be confused. Also, the court faulted the plaintiff for not providing a description of plaintiff’s genuine products. Therefore, the court denied default judgment and released defendants’ financial accounts.

Case: Dorna Sports v. Individuals…on Amended Schedule A, No. 24 CV 11676, 2025 U.S. Dist. LEXIS 177866, at *1 (N.D. Ill. Sep. 11, 2025).

*Note: The court used the words “ordinary observer” in stating “Plaintiff fails to provide any actual facts explaining how or why an ordinary observer would be deceived.” That’s a design patent claim reference. But it is consumer confusion that is considered in trademark cases.

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Shipping options to Illinois not enough alone to confer personal jurisdiction in Schedule A trademark case

Screenshots of purchase pages on Walmart’s e-commerce platform showing shipping options to Illinois were not enough to confer specific personal jurisdiction over defendants in a Schedule A trademark case. There was no evidence of an actual sale to Illinois residents, written confirmation of sales with an Illinois shipping address, or shipping confirmation to an Illinois address. Therefore, the case was dismissed for lack of jurisdiction.

The plaintiff claimed ownership of trademarks including LUCKY 13 used in connection with clothing and that the defendants were selling counterfeit LUCKY 13 products. But without evidence of sales to Illinois, its luck ran out when it sought default judgement against the defendants.

Case: Blue Sphere, Inc. v. Individuals, No. 25 CV 004715, 2025 U.S. Dist. LEXIS 176670 (N.D. Ill. Sep. 10, 2025).

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Specimen Showing Downloadable Software for a Trademark Application

The USPTO distinguishes between downloadable software and non-downloadable (e.g. web-based) software, placing them in different classes of goods/services. When claiming downloadable software in a trademark application, the USPTO looks for a specimen evidencing the software is downloadable. Typically that occurs via a specimen showing a “download” or similar link.

In a recent case, the TTAB of the USPTO rejected the applicant’s specimens, finding that the specimens did not demonstrate the software was downloadable. One of the annotated specimens (below) showed that the icon to launch the software opened a web browser. The TTAB said, “Showing that the software is accessible via a web browser may not necessarily preclude the fact that the software may be downloadable; however, only showing the software accessed via a web browser does not effectively show the downloadable nature of the software.”

[Case: In re Amada Am., 2025 TTAB LEXIS 364, Serial No. 88322796 (TTAB 2025)].

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Trademark Licensing Needs Quality Control

When an owner allows another (known as a licensee) to use the owner’s trademark, it is important that the owner control the quality of the goods and services provided by that Licensee under the owner’s trademark.

A trademark owner can lose rights in that trademark through uncontrolled licensing, also known as “naked licensing.” “If a trademark owner allows licensees to depart from its quality standards, the public will be misled, and the trademark will cease to have utility as an informational device,” resulting in its abandonment. TMT N. Am., Inc. v. Magic Touch GmbH, 124 F.3d 876, 885 (7th Cir. 1997)(a case involving THE MAGIC TOUCH trademark).

Reasoning for the requirement of quality control, includes that “The economic function of a trademark is to provide the consuming public with a concise and unequivocal signal of the trademarked product’s source and character … and that function is thwarted if the quality and uniformity of the trademarked product are allowed to vary significantly without notice to the consumer.” Draeger Oil Co. v. Uno-Ven Co., 314 F.3d 299, 301 (7th Cir. 2002).

How much control and inspection is necessary to satisfy the quality control requirement depends on the circumstances. What may be sufficient control for a mark used on writing pens may be insufficient for a mark used on pharmaceuticals. McCarthy says, “The goal is that there must be control sufficient to meet the reasonable expectations of the customers when they see the licensed mark appear in the marketplace.” McCarthy on Trademarks 18:55.

Also, a written trademark license should provide the owner with a contractual right to control the nature and quality of the goods and services provided by the licensee under the mark. The written license should include the right to inspect the relevant goods/services and the corresponding operations of the licensee so the owner can insure conformance with the owner’s standards. Without a right to inspect, the owner may be hampered in exercising control. The written license may require the licensee to submit specimens/examples to owner of the goods and services to be offered by the licensee under the mark so that the owner can review, instruct modifications to conform to owner’s standards, and approve or disapprove such goods/services before sale by licensee. The owner should effectively exercise these rights.

Further, the written trademark license should provide the owner with the contractual right to control the nature and manner that the trademark is presented in the use by the licensee, such as on or in connection with the goods and services and related advertising. The owner may have a separate brand guide that specifies how the trademark should be used and presented. The brand guide may specify the particular font, style, color, placement, and/or other features of the use of the mark that the owner requires.

The result of abandonment by naked licensing is drastic–the forfeiture of the trademark. To better avoid a naked license challenge to the validity of its licensed mark, the owner should have a contractual right of control over the nature and quality of the goods/services and should effectively exercise that right.

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Record Trademark Assignments or Risk Loss of Rights

The case of C21FC LLC v. NYC Vision Capital Inc., No. CV-22-00736-PHX-SPL, shows ownership of registered trademark rights can be lost by not recording the relevant trademark ownership transfer document with the U.S. Patent and Trademark Office (USPTO).

In that case, plaintiff C21FC entered into a franchise agreement with NYC Vision Cap. Inc. (NYCVC) for a franchise under the mark The Eye Man. Two weeks later, on July 13, 2021, co-plaintiff C21VX executed an asset purchase agreement (APA) to buy another optical service business named The Eye Man. On the same day, the Eye Man’s sellers and Mr. Singer, C21FC’s principal member, also executed a Trademark Assignment (Assignment) to assign all rights and interests in The Eye Man trademark, goodwill, and business to Mr. Singer.

But a bank that provided financing to NYCVC for the franchise transaction requested that the assets purchased under the APA be owned by NYCVC so that there would be sufficient collateral. So an Amendment to the APA was executed later on the day the APA was executed, substituting NYCVC as the “Buyer” in the APA in place of C21VX.

A dispute arose over who owned The Eye Man trademark, among other matters. The Plaintiffs asserted the Amendment inadvertently failed to differentiate between the physical assets, which were to be transferred to NYCVC, and the trademarks, which were to be owned by C21VX. But NYCVC argued that the Amendment effected the sale of all The Eye Man’s assets to NYCVC.

The court found that the Amendment did “what it says it does: to substitute NYCVC as the Buyer in the APA in all respects, including as the buyer of The Eye Man’s intangible assets.” The court found that the Trademark Assignment, which appears to have been executed before the Amendment, did not change the outcome. The court found that the Trademark Assignment was likely void as against NYCVC under 15 U.S.C. § 1060(a)(4). That statute provides that “an assignment shall be void against any subsequent purchaser for valuable consideration without notice, unless the prescribed information reporting the assignment is recorded in the United States Patent and Trademark Office within 3 months after the date of the assignment or prior to the subsequent purchase.”

Here, Mr. Singer did not record the Assignment at the USPTO. And, there was no evidence that defendants became aware of the Assignment between the execution of the Assignment and the execution of the Amendment. Therefore, the later Amendment gave NYCVC ownership of the trademark and the earlier unfiled Assignment was void as against the defendants.

Trademark Registration Ownership Recording System

15 U.S.C. § 1060(a)(4) provides that if an assignment is not recorded at the USPTO within three months of the date of the assignment, it will not be superior to rights obtained by a third party subsequent for value if that third party did not have knowledge of the unrecorded assignment.

This provision is similar to many state-based systems of recording ownership of real estate.

Section 1060(a)(4) encourages trademark owners to file (record) evidence of their ownership of a trademark with the USTPO. This allows parties who enter into transactions regarding those trademarks to look to the public record to determine whether the party they’re dealing with is the actual owner or not.

The recording system discourages a seller from selling rights to a first party and then selling the same rights to a second party . The first party will have an incentive to record that transfer with the USPTO because of the protections provided by section 1060(a)(4).

Record

Therefore, when purchasing registered trademark rights (or rights in a mark with an associated pending trademark application) it is important to record at the USPTO the assignment (or other transfer document) transferring those trademark rights. Otherwise the purchaser could lose rights in the trademark(s) to someone who purchases rights in the trademark later without knowledge of the prior ownership/assignment.

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First Amendment Defense to Trademark Infringement Claim: MTV Floribama Shore Does Not Infringe FLORA-BAMA Trademark

The First Amendment can be a defense to a trademark infringement claim when the accused work is an artistic work. There, in many cases, trademark rights must yield to the public interest in free expression protected by the First Amendment.

This is demonstrated in the case of MGFB Properties Inc. V. 495 Productions Holdings LLC, No. 21-13458 (11th Cir. 2022). In that case MGFB and its related entities sued 495 Productions and Viacom alleging that the title of the MTV Floribama Shore reality TV show infringed its FLORI-BAMA trademark.

The Plaintiffs operate the Flora-bama Lounge, Package and Oyster Bar on the Florida-Alabama boarder, and have done so since 1964. MGFB owns federal trademark registration no. 4,272,440, for FLORA-BAMA for bar and restaurant services as well as several entertainment services including hosting social entertainment events, live musical performances, and competitions for fish throwing.

The defendants produced and aired a reality TV show titled MTV Floribama Shore. It was modeled on its prior reality show, Jersey Shore. With the MTV Floribama Shore show, the defendants wanted to highlight “young [S]outhern folks” who go to “shore houses” or “spend summers” on the Gulf of Mexico, extending from the Florida panhandle into Alabama and Mississippi.

1. The First Amendment Roger’s Test Applied

The Second Circuit’s Rogers test balances the trademark owner’s rights against the rights under the First Amendment in connection with artistic works. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). It provides that the title of an artistic work does not violate the trademark act, “[(1)] unless the title has no artistic relevance to the underlying work whatsoever, or, [(2)] if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”

In the MGFB case, the court applied the Roger’s test finding that MTV’s use of Floribama was artistically relevant to the show. The court said:

“‘Floribama’ describes the subculture profiled in the series and the geographic area exemplified by the subculture. To break it down even further, the former part of ‘Floribama,’ i.e., ‘Flori,’ refers to Florida and the beach culture the series sought to capture, while the latter part, i.e., ‘bama,’ refers to Alabama and the Southern culture the series sought to capture. … ‘Floribama’ gave viewers ‘a very distinct sense of what part of the country and subculture the series was about.”

On the second part of the Rogers test, the court found that title of MTV’s show was not explicitly misleading. The court said that the relevant question under this part is “whether (1) the secondary user overtly ‘marketed’ the protected work as ‘endorsed’ or ‘sponsored’ by the primary user or (2) ‘otherwise explicitly stated’ that the protected work was ‘affiliated’ with the primary user. ” And the court found no evidence of this. On the contrary, Viacom “chose a title that includes its own house mark (MTV) and the name of one of its iconic franchises (Shore).”

Therefore, Defendants’ use of Floribama in its television series title—MTV Floribama Shore—did not infringe the FLORA-BAMA trademark .

2. Some Confusion Is Allowed When First Amendment Applies

The court found MTV’s show title did not infringe even though MGFB presented some evidence that the title of the show caused confusion. MGFB conducted a survey that found that 34% of those surveyed had heard of the term “Flora-bama,” and half of that 34% identifying it as the Lounge. However, this was irrelevant because the evidence must relate to the nature of the defendant’s behavior under part 2 of the Rogers test, not the impact of the defendant’s use. Further, MGFB “submitted emails, letters, and declarations from their bartenders and regular musical acts stating that there have been multiple instances of confusion between the series and the Lounge.” Yet, this did not lead to a different result.

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Injunction Limiting Use of Trademarks On Webpage Did Not Apply to Use in HTML Source Code

CDMPUsually, if you are ordered not to use a mark more than a certain number of times on a webpage, you’d be conservative and count uses of the mark that are visible on the webpage and the uses that are not visible but are in the HTML source code. Do you want to argue whether use of the mark in the HTML source code is not a use of the mark on the webpage because it’s not visible?

Seems better to avoid testing this distinction and prompting your opponent to move for sanctions. It is arguable that use of a mark in a HTML source keyword meta tag should not be infringement, since search engines probably ignore it and customers can’t normally see it, but sometimes a court says it is.

Enterprise Warehousing Solutions, Inc. (EWS), a test prep company, proceeded to test this distinction, whether intentionally or not.

Data Management Association International (“DAMA-I”), an exam and certification provider, sued EWS for trademark infringement. One of the certifications DAMA-I provides is the Certified Data Management Professional (“CDMP”) certification. To obtain the certification, a person must pass the Data Management Fundamentals Exam.

DAMA-I alleged that EWS was inappropriately using DAMA-I’s trademarks on EWS’s website and social media accounts when promoting its test prep course. The court entered a preliminary injunction against EWS. However, the court recognized the need, under nominative fair use, for EWS to use certain DAMA-I marks in a limited matter to describe EWS’s exam preparation course. Therefore the injunction allowed EWS to use certain of DAMA-I’s mark up to five times on any web page.

DAMA-I found that EWS was using DAMA-I marks in EWS’s website source code, which was not visible on the rendered web pages. By counting the use of the marks in the source code, DAMA-I assert EWS exceeded the prohibition on using DAMA-I’s marks more than five time on any web page.

But earlier in briefing on the preliminary injunction motion the parties did not address use of marks in HTML source code or metatags. Instead they focused on the content on EWS’s web pages. The court found that “Nowhere in the preliminary injunction order did the Court mention marks invisible to the consumer.” So the court found that the use of marks in HTML source code (which was not visible when the webpage was normally displayed) fell outside of the scope of the preliminary injunction.

This could have gone the other way. So, check for any source code use of third marks that are not visible on the rendered webpage. And the conservative route is to remove those uses.

Cite: Data Mgmt. Ass’n Int’l v. Enter. Warehousing Sols., Inc, No. 20 C 04711, 2022 U.S. Dist. LEXIS 204942 (N.D. Ill. Nov. 10, 2022).

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Overcoming Trademark Registration Refusal: The Refusal Lacks Supporting Evidence

EPIGENEWhen a trademark application is refused registration based on a likelihood of confusion with a prior registration, the examining attorney of the USPTO must support that refusal with evidence. If it is not, the refusal can be reversed by the Trademark Trial and Appeals Board (Board) as demonstrated in the following case.

Genebook LLC applied to register EPIGENE for the goods of “electronic database in the field of genes recorded on computer media.” The application was refused based on two prior registrations for the same mark EPIGENE. The goods listed in the prior registrations for EPIGENE where (1) Diagnostic preparations for medical purposes, and (2) Apparatus for medical diagnostic testing in the fields of cancer or other tissue-based diagnostic testing, cytology and cell-based testing.

The examining attorney needed to support the refusal with evidence that the goods in the registrations and the goods in Genebook’s application were related in some manner and/or that the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source. But the Board found the evidence was lacking and reversed the refusal.

1. Similarity of the Goods

The examining attorney cited website evidence from numerous DNA testing companies to try to show that the goods where related. However, the Board said there was “no evidence in the record that any of these companies offer an ‘electronic database in the field of genes recorded on computer media’ with search and retrieval capability to their customers.” The DNA testing companies offered printed reports . Yet, the Board said, “While these printed reports ‘may’ be created via access to an electronic database, we have no basis for finding that these reports are themselves ‘databases’ as that term is defined and understood in this field.” Further, the sellers of genetic testing equipment did not offer gene databases or information from gene databases in connection with their products.

Therefore, there was a gap in evidence between the goods of the prior registrations and the applicant’s goods.

Further, the examining attorney can show the goods are related by showing they “have complementary uses, that they are often used together or that they are otherwise bought by the same purchasers for the same or related purposes, such that confusion would be likely if the goods were marketed under the same mark.” Yet, the Board found that there was little evidence of this.

2. Channels of Trade

The Board acknowledged the principle that “In the absence of meaningful limitations in either the application or the cited registrations, [we] properly presume[] that the [respective] goods travel through all usual channels of trade and are offered to all normal potential purchasers.” However the Board found that this presumption is “not a substitute for proof, which is absent here.”

As a result of the lack of evidence showing similarity of the goods or overlapping channels of trade, the Board reversed the refusal and allowed the application to proceed toward registration.

Identifying a lack of evidence supporting a trademark registration refusal is one possible path to overcoming a refusal and achieving registration.

Case: In re Genebook LLC, Serial No. 90269018 (TTAB Oct. 26, 2022).

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Model Numbers and Designations as Trademarks

A product model, style, or grade designation can be protected as a trademark. But, as with other trademarks, the designation must be used as a trademark. To illustrate this point, let’s look at the Trademark Trial and Appeal Board (TTAB) decision in In Re Hydro-Gear Limited Partnership, No. 87641657 (TTAB 2020).

In that case, Hydro-Gear applied to register ZT-1800 for land vehicle parts, namely, transaxles. Hydr-Gear submitted specimens showing use of ZT-1800, including the following:

The problem is that ZT-1800 at the right of the highlighted portion in the image above does not stand out like a trademark. Can you tell its a trademark on that label? No. It blends in with the surrounding text.

The TTAB said, the mark, ZT-1800, in the specimens appeared “in nondescript block lettering, which is displayed on the same line and in the same size, font style, and boldness as the other wording or lettering in that part of the specimen.” Further, the TTAB noted that the mark “appears in a font size much smaller than most of the other elements on the shipping label….in a manner more befitting information matter, such as in this case a model number, rather than an indicator of source.”

The TTAB said that “It is well settled that terms used merely as model, style, or grade designations are not registrable as a trademark because they do not serve to identify and distinguish one party’s goods from similar goods manufactured and/or sold by others.” The key word in that sentence is merely.

This is because in another case, the TTAB said, “Depending upon the nature and manner of use, it is possible for an alphanumeric designation, which functions only in part to designate model or grade, to be inherently distinctive, and hence not require a showing of secondary meaning in order to be protected as a trademark.” Neapco Inc v. Dana Corp., 12 U.S.P.Q.2D (BNA) 1746, 1748 (TTAB 1989). Therefore, the manner that the model or grade is used and presented impacts whether it will be deemed a protectable trademark or merely a model, style, or grade designation.

The mark at issue in the Neapco case was “5-280X” for “Couplings, Specifically Universal Joint Couplings for Use in Drive Lines for Vehicles.” We don’t have the example uses from that case, but a later renewal filing included the following specimen portion:

In this example, you can see that the mark “5-280X” is the largest text on the right-side label (apart from the “Spicer” on the box to the left). The 5-280X mark is featured at the top of the label. When you compare the 5-280X mark on this label to the use of ZT-1800 on the label in the Hydro-Gear case, 5-280X is more prominent.

While the specimen showing the 5-280X mark above was accepted by the USPTO, more could be done to better position the 5-280X mark as a trademark. It could be presented in a different font and/or color from the surrounding text. It could be provided with a color or other emphasis like the red line under “Spicer” on the box. It’s orientation could be altered, like the angled appearance of “Spicer.” No particular mode of emphasis is required, but the key is to make the mark stand out.

Ask this: When I look at the use of the model, style, or grade designation, does it standout like a trademark? Also, would a customer recognize this as a trademark? If not, or if in doubt, add more emphasis.