Invention, Design, & Branding Lessons from Apple’s Lead Designer Jony Ive

JonyIveThe GeniusBehindApplesGreatestProducts

“In a company that was born to innovate, the risk is in not innovating. . .The real risk is to think it is safe to play it safe,” said Jony Ive, the lead industrial designer for Apple.

Jony Ive is the subject of Leander Kehney’s book Jony Ive: The Genius Behind Apple’s Greatest Products . Steve Jobs, deservedly,  gets a lot of attention and credit for the success of Apple products. However, Jony Ive is the man behind many of the decisions about and features of Apple’s products.  The book is not an authorized biography. Yet, it provides insights into the product innovation process and product development process at Apple. It also demonstrates how product design alone can indicate a brand to customers.

Design Alone Can Carry Branding without a Logo or a Name
The face of the iPhone and IPad has an infinity pool look devoid of any product or company name or logo. The brand is carried by the design itself:

iPhone 4 with the black “infinity pool” face common to all iPhones

The front face bore neither the company logo nor the name of the product. “We also knew from our experience with iPod,” [Chris] Stringer [of Apple] explained, “if you make a startlingly beautiful and original design, you don’t need to. It stands for itself. It becomes a cultural icon.”

Apple sought design patents to protect the look of the iPhone which proved effective when Apple sued Samsung alleging Samsung’s phones were copied from Apple designs and infringed Apple’s design patents, among others.

Apart from patents, the idea that the shape of a product can indicate a source of the product is recognized in trademark law as trade dress protection. Apple was also successful proving that some of Samsung’s phones infringed Apple’s trade dress rights in the design of the iPhone. The iPhone and iPad are products that demonstrate the look of a product through its design can do the work of conveying the brand to the customers.

Innovation is a Series of Steps, Not one Giant Leap
Richard Powell of the design firm Seymourpowell is quoted on the process of invention in the book:

“Innovation…is rarely about a big idea; more usually it’s about a series of small ideas brought together in a new and better way. Jony’s fanatical drive for excellence is, I think, most evident in the stuff beyond the obvious; the stuff you perhaps don’t notice that much, but which makes a difference to how you interact with the product, how you feel about it.”

Design Should Make Technology Approachable
Apple is famous for making products that are easy to use. The handle and the transparency of the iMac case (click here for a photo of the IMac case) is discussed as an example:

The transparency added a sense of accessibility, but in order to give the iMac an even more approachable feel, the designers added a handle on top. For Jony, the handle on the iMac was not really for carrying it around, but to build a bond with the consumer by encouraging them to touch it. It was an important but almost intangible innovation that would change the way people interact with computers.

“Back then, people weren’t comfortable with technology,” Jony explained. “If you’re scared of something, then you won’t touch it. I could see my mum being scared to touch it. So I thought, if there’s this handle on it, it makes a relationship possible. It’s approachable. It’s intuitive. It gives you permission to touch. It gives a sense of its deference to you.”

Design Interest from Early Age Cultivated by his Father
Jony had an interest in design from a young age.

As a young boy, Jony exhibited a curiosity about the workings of things. He became fascinated by how objects were put together, carefully dismantling radios and cassette recorders, intrigued with how they were assembled, how the pieces fit. Though he tried to put the equipment back together again, he didn’t always succeed.

“I remember always being interested in made objects,” he [Jony] recalled in a 2003 interview conducted at London’s Design Museum. “As a kid, I remember taking apart whatever I could get my hands on. Later, this developed into more of an interest in how they were made, how they worked, their form and material.”

Jony’s father, Mike Ive, worked as a silversmith and a teacher. Mike eventually was put in charge of monitoring the quality of teaching at schools in his district, focusing on design and technology. In doing so Mike moved design technology from a marginal subject to something that occupied seven to 10 percent of a student’s school time. Mike’s design emphasis was not limited to school but also was passed on to his son:

Mike Ive encouraged his son’s interest, constantly engaging the youngster in conversations about design. Although Jony didn’t always see the larger context implied by his playthings (“The fact they had been designed was not obvious or even interesting to me initially,” he told the London crowd in 2003), his father nurtured an engagement with design throughout Jony’s childhood.

He was constantly talking to Jonathan about design. If they were walking down the street together, Mike might point out different types of street lamps in various locations and ask Jonathan why he thought they were different: how the light would fall and what weather conditions might affect the choice of their designs. They were constantly keeping up a conversation about the built environment and what made-objects were all around them . . . and how they could be made better.

Jony Ive: The Genius Behind Apple’s Greatest Products is a worth while read with interesting insights into Apple’s product development and design processes and philosophy. Particularly interesting was Apple’s intentional reliance on trade dress rights in the look of the product–without any logo or name on the face of the iPhone and iPad–to convey its brand.

Words or a Logo or Both in a Trademark Application?

LogoWordCombinedTrademarkApplicationIf your trademark includes words, letters, or numbers, before filing a federal trademark application you need to determine whether you will include any logo or stylistic element(s) as a part of your claimed trademark in the application. This is true because the U.S. Patent & Trademark Office asks you to specify whether or not you are claiming with your mark any font, style, size, color, or graphics. Marks without a claim of any of those style elements are known as standard character marks. Marks with any of those claims are known as special form (styled and/or design) marks.

If your mark is a combination of words or characters with a logo or design elements, it can be, but it is not always the best approach to claim the logo and design elements in your trademark application. Below are issues to consider when deciding whether to pursue a trademark registration on a standard character mark or a special form mark.

Types of Trademarks
First a review of the types of trademarks is helpful to the discussion that follows about how to claim your trademark in a trademark application.

Standard Character
A standard character mark is one where the mark has word(s), letter(s), and/or number(s) with no design element and no claim to any particular font, style, size, or color. The character(s) of the mark must appear in the Trademark Office’s standard character set. The characters or word(s) of the mark are provided in standard text without any style, font, or graphics. For example, U.S. Trademark Reg. No. 1,452,359, is for the mark “STARBUCKS” as a standard character mark.

Special Form
Special form marks cover marks presented in a variety of ways and make a claim to the stylistic elements included with the mark. Below are a few examples.

IBMLogo1Mark with a Particular Font or Stylized Text
This type of mark does not have a logo outside of the styling/font of the text of the mark. IBM’s U.S. Trademark Registration No. 1205090 is an example where the mark “IBM” is represented in the now widely recognized horizontally striped style.

NikeSwooshLogo Mark Alone
This type of mark has no standard characters in it. Nike’s U.S. Trademark Reg. No. 1,232,243 is an example of the Nike “swoosh” logo mark that has been registered alone without any standard characters.

Logo with Adjacent Text
NikeSwooshWordsThis type of mark has standard characters adjacent to the logo. Nike’s U.S. Trademark Reg. No. 1,325,938 is an example where the word “NIKE” is combined in the registration and adjacent to the swoosh logo. However, the combined adjacent elements must present a unitary commercial impression, which this mark does.

StarbucksLogoLogo Mark with Embedded Text
This type of mark has standard characters embedded in the logo. Starbucks U.S. Trademark Reg. No. 1,815,937 is an example of a registration where the text “STARBUCKS COFFEE” is embedded in the Starbucks logo.

Color as an element of the Mark
MobileColorClaimThis type of mark claims color as an element of the mark. Exxon Mobil’s U.S. Trademark Reg. No. 3,787,476 is an example of a registration where color is claimed as a feature of the “MOBIL” mark. In that registration, the letters M B I L are claimed in blue and O is claimed in red.

Strong Protection
Companies with a lot of resources to dedicate to trademark and brand protection often file several trademark applications on their marks for the same goods/services. For example, Nike owns (1) U.S. Trademark Reg. No. 0,978,952 on the standard characters “NIKE” for athletic shoes, (2) U.S. Trademark Reg. No. 1,232,243 on the “swoosh” logo alone for athletic shoes (shown above), and (3) U.S. Trademark Reg. No. 1,325,938 on combination of the word NIKE with the “swoosh” logo for athletic shoes (shown above). Similarly, Starbucks owns (1) U.S. Trademark Reg. No. 1,452,359 on the standard characters “Starbucks” for coffee, (2) U.S. Trademark Reg. No. 1,815,937 on the Starbucks logo having the words “Starbucks Coffee” for coffee (shown above).

Many times the broadest protection is achieved by filing multiple trademark applications covering the same goods/services. For example, broad protection may be achieved by (a) filing one application covering the standard characters, (b) filing an application on the logo combined with the words, and (c) sometimes filing on the logo alone without the word if the logo is used in that manner (e.g. Nike’s swoosh logo).

Why So Many Trademark Registrations?
Standard character marks protect just the standard characters of the mark and not any logo, graphical, or stylistic elements. Therefore Nike’s standard character trademark registration does not cover its swoosh logo. On the other hand, special form marks can be interpreted to be limited, to some extent, by their logo, graphical or stylistic elements. Therefore, while the words/characters of a special form mark will generally be given greater weight when comparing to other marks for infringement or conflict, it is possible that in some circumstances were a third party doesn’t use the exact same wording as your mark and does not have the same logo/style elements, then the third party may have a better chance of avoiding your claims of infringement based on a special form mark alone. So covering your mark in multiple registrations can give you broader protection against infringers.

Another, possibly more likely, problem with proceeding only with a special form trademark is that if you decide later to change your logo or the stylistic elements in the special form mark, then you might have to file a new trademark application on the changed version depending on the extent of the changes. Further, you might not be able to renew the trademark registration of the old version because it is no longer in use. Trademark law rewards longevity of use and registration. Therefore a mark that has been registered for a long time will have a better chance of being considered strong and will be harder for others to challenge its validity. So, if you have to drop registrations because of logo changes you will not receive the benefits of maintaining a trademark registration for long periods of time. Standard character marks don’t have this problem because they cover the words within the mark as presented with any logo or stylistic arrangement.

Economizing: Money for Only One Application
If you have a mark with a logo or design elements and you only have the funds to file one trademark application, below is some general information to consider. If you don’t have a logo or graphical representation of the mark, then it is easy, and a standard character mark should be selected in the application process. When choosing to economize by filing one application, there’s always a risk that a situation could arise with a third party where it would have been better to have filed multiple applications or a different type of application than they one that was filed. But that risk is a part of the balance being struck when choosing to reduce costs by pursuing one application.

Distinctive Mark: Standard Character
If the words or characters of your mark are very distinctive (e.g. fanciful, arbitrary or even suggestive), then it’s generally best to pursue a standard character trademark first. This is true because protection of a standard character mark covers the characters and words of the mark presented in any font style, arrangement, or graphical representation with an additional logo or without. Therefore standard character marks have the broadest protection because they are not limited to any particular color, style or graphic. However, a standard character mark will not protect the design or logo elements used by others that do not include the same or similar words/characters.

Weak Marks: Combine with Logo or Stylistic Elements
If the words or characters of your mark are weak or descriptive then it is generally best to pursue a trademark application that claims the combination of the words and a logo, but only if the words and logo will be used together in your business. This is effective when the logo includes the words of the mark (e.g. Starbucks Logo). However it also can be effective if the logo and words are adjacent one another (e.g. “Nike”combined with the Swoosh). Either way, the distinctiveness of the logo should protect the trademark from being considered merely descriptive by the Trademark Office.

Important Logo
If the characters or words of your trademark are distinctive but your logo is very important to you, you might decide to pursue a special form mark including the logo and the words given the importance of your logo (e.g. “Nike” combined with the Swoosh mark and Starbuck’s logo mark). However, if the logo is changed in the future you may have trademark renewal problems as explained above.

Font Only
If the stylistic features of your mark only include a particular font style or color arrangement (e.g. IBM and Mobile), then as long as you’re mark is sufficiently distinctive you will probably get the most bang for your buck by pursuing a standard character mark.

Seek Multiple Application(s) Later
As your business develops, you may decide to dedicate more resources to trademark registration. If you do, you can add trademark registrations at that time to broaden the scope of protection.

The broadest protection may be obtained by filing separate federal trademark applications on the words lone, the logo, and the logo combined with the words. However, when starting out, you might decide to economize by filing only one trademark application. Whether that application should be a standard character mark or a special form mark is circumstance dependent. Many times an application on the standard character mark make sense as long as the mark is sufficiently distinctive. If it is not distinctive then an application on a special form mark having the logo and the words may be the best option. Above are some points to consider in the decision process.

What is Trade Dress?


Trade dress recognizes that product/service packaging or the product appearance itself can act as a source identifier in the same manner as more traditional trademarks, like names and logos. In other words, in some circumstances the product packaging or the product appearance can be so uniquely tied to one company or source of goods/services that the packaging or the product appearance indicates to the customer the source of the goods/services. Many times the trade dress of a product allows the consumer to recognize the source of that product from the product packaging or the product appearance alone without any brand or logo appearing with it.

Product and Service Packaging
One example of product packaging trade dress is the classic Coca Cola bottle shape. Coca Cola has a registered trademark (Tm. Reg. No. 1,057,884) over the shape of the classic Coca Cola bottle, as shown at the top of this post. The Coca Cola bottle shape has been used since 1916. Given the unique shape and Coca Cola’s long and exclusive use of this shape for packaging cola, the purchasing public has come to recognize the shape of that bottle as associated with Coca Cola, even if the Coca Cola name is not on the bottle. Product packaging can also cover traditional box package styling. However, aspects of a service “packaging” can also be protected, such as the appearance and decor of a restaurant.  This is not an exhaustive list, basically any packaging or “dressing” of a product or service might qualify as trade dress.

Tm. Reg. No. 2,511,360

Product Design
Trade dress rights can be generated in the design of the product itself, separate from the product packaging. Generally it takes a longer amount of time and/or more marketing efforts to generate trade dress rights in the shape of a product. One, somewhat controversial example of registered product design trade dress is that of the Navy Chair by Emeco Industries (Tm. Reg. No. 2,511,360). The Emeco Navy Chair is an example where a company has had a long period of use of the product shape. Emeco claims to have sold the Navy Chair since 1978.

An other example of product design trade dress is the configuration of the iPhone being rectangular with rounded corners as shown in Tm. Reg. No. 3,457,218 (“the ‘218 registration”). Apple used this design since 2007 and it was registered in 2008. This is a very short time for a product design to achieve trade dress protection. However the Trademark Office was convinced that the shape had become distinctive .

Tm. Reg. No. 3,457,218

In Apple’s application to register this trade dress, Apple claimed that the extensive media coverage of the launch of the iPhone, including front page coverage on national newspapers and lead stories on TV news broadcasts, amounted to about $400 million in free advertising. Further, Apple claimed 1 million iPhones were sold in the first 74 days after the product was launched. Apple cited leading trademark scholar Thomas McCarthy’s treatise McCarthy on Trademarks for the proposition that no minimum amount of time is necessary for a mark to achieve distinctiveness in the marketplace. Massive TV and print advertising campaign can promote a trademark or trade dress to distinctiveness within a matter of days or weeks in certain circumstances. Currently Microsoft is challenging the validity of this ‘218 registration at the trademark office.

Tm. Reg. No. 3,470,983

Apple has a second trade dress registration (Tm. Reg. No. 3,470,983, “the ‘983 registration”) that is more narrow in that it includes more elements than is shown in the ‘218 registration. The ‘983 registration includes color and various elements of the iPhone home screen, whereas the ‘218 registration claimed only the exterior shape of the product. In the Apple v. Samsung lawsuit, in response to Questions 12 and 15 of the Verdict form, the jury found that the trade dress of the ‘983 registration was valid and infringed by some of Samsung’s products.

Trade Dress and Patents
Patents traditionally protect product designs. However, in some cases the product design in not patented. In such cases, trade dress rights might be used to prevent copying of the product design. Therefore trade dress rights can sometimes be used as a quasi-substitute for patent protection. In other cases, when a patent exists over the product design at issue, both trade dress and patent rights might be asserted to prevent copying.

The packaging or the product itself can be protected under trademark law if such packaging or product becomes distinctive in the minds of the consumers so that it is associated with a single source (e.g. your company). Often it can take a period of time for such trade dress rights to develop. However, there is no set period of time, and recognition can be achieve in a short time depending on the extent to which customers have been exposed to the trade dress.

How To Choose a Strong Trademark

Trademark Strength

Not all trademarks are equal in strength. The strength of a mark is a measure of the extent and scope of protection provided for the mark under trademark law. As shown in the diagram, strong marks have a bigger buffer or protection moat around them and thus prohibit competitors from operating within that buffer. Weaker marks have a smaller buffer. The smaller buffer allows competitors to use marks that are more similar to a weak mark than would be allowed for a strong mark, all other things being equal. This post explains how to select a strong trademark so you can keep your competitors at a larger distance from you in terms of the similarity in the marks that competitors use.

A strong mark is one that has a greater level of distinctiveness in relation to the product or service with which it is used.A strong mark should be distinctive rather than descriptive. Descriptive marks that merely describe the goods or services that the mark is used on or in connection with are difficult to protect during initial use. The reasons for this are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.

Continuum of Distinctiveness TM_Strength-003
The strength of a mark can be categorized along a continuum, ranging from marks that are highly distinctive (e.g.“Pepsi” for cola) to marks that are a generic name (e.g. “coffee”) for the goods or services. The degree of distinctiveness of a mark can be determined by considering it in relation to the specific goods or services. The degree of distinctiveness of a mark corresponds to the degree of protection provided by trademark law. The more distinctive a mark is the more protection provided by law.

Marks that are highly distinctive when used in relation to the goods or services are considered arbitrary or fanciful. Arbitrary and fanciful marks are located on the strong end of the continuum. Next on the continuum are suggestive marks, followed by merely descriptive matter. Last are generic terms. Generic terms are at an end opposite arbitrary and fanciful marks.

PespiFanciful marks include terms that are created for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are generally unknown in the language, such as PEPSI . The word Pepsi did not exist before Pepsi created it and began advertising under it.

Next, arbitrary marks are those that are commonly used but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality or characteristic of the goods or services, such as APPLE for computers. The term apple had nothing to do with computers before Apple Inc. began using the term for that purpose.

Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services. For example, BEAUTYREST suggests something about the nature of mattresses. beautyrestA suggestive term requires imagination, thought, or perception to reach a conclusion regarding the nature of the goods or services. A suggestive term is different from a descriptive term because a descriptive term immediately tells something about the goods or services.

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the corresponding goods or services. Descriptive marks may not be registered on the primary register without proof that the mark is widely recognized by consumers–that is the marks have gained “secondary meaning” in the marketplace. For example, BED & BREAKFAST REGISTRY was found merely descriptive of lodging reservations services. However, American Airlines was likely initially merely descriptive (its an airline that flies in America), but over time has become widely recognized and thus protectable.

Generic terms are those terms that the relevant purchasing public understands primarily as the common or class name for the goods or services, e.g. coffee. Generic terms alone cannot be protected as trademarks. However generic terms are sometimes combined with other terms or components to achieve protection over the combination, e.g. Starbucks Coffee. However, the Starbucks Coffee trademark cannot be used to stop others from using the term coffee alone or in combination with other terms not similar to Starbucks.

Selecting Strong Marks
The strongest marks are fanciful and arbitrary marks. However, practically these marks require the most marketing resources to create consumer recognition. Suggestive marks provide a middle ground where the mark suggests a feature of the product or service thereby reducing the amount of marketing resources required to inform your customers as compared to fanciful marks, while still providing a reasonable amount of protection under trademark law.

Eric Waltmire Presenting on IP for Dupage’s REV3 Innovation Center

Rev3On March 11, 2014 at 6:30pm, REV3 Innovation Center of Dupage is hosting me for a presentation on Strategies for Protecting Intellectual Property: Innovation and Branding. Intellectual property plays a role in adding value to most businesses, whether through invention, branding, or the use of other creative works.

My presentation will help business owners, entrepreneurs, and inventors understand how patents and trademarks can be used to protect innovation and business branding. It will provide strategies for protecting intellectual property rights under various scenarios and funding circumstances. Sign up here to attend.

Particularly the presentation will cover the following.

Patents and Invention Protection:

  • What is patentable
  • Patent Searching
  • The U.S. Patent Application Process
  • When to maintain secrecy and when to publicize
  • Seeking Foreign Patent Protection
  • When not to seek a patent
  • When and how to rely on trade secret protection

Trademarks and Brand Protection:

  • Value of trademarks
  • Types of marks
  • Strategies for choosing legally strong marks
  • Proper trademark use
  • Strategies for relying on branding in the absence of patent protection

In addition, the presentation will discuss steps that are needed to obtain and maintain ownership over the intellectual property created by your company, its employees, and its contractors.

REV 3 Innovation Center
REV3 Innovation Center is an incubator and future co-working space in DuPage County. REV3 is focused on helping people and companies manufacture products, software, and technology to drive the third industrial revolution. One aim of REV3 is to provide facilities to allow companies to prototype, build, and assemble small and moderate scale product volumes.

If you are interested in getting involved with REV3, please contact me.

The presentation will be held at the Illinois Institute of Technology (IIT) – Rice Campus at 201 E. Loop Rd., Wheaton, IL 60189.

Please sign up to attend here:

Use Based v. Intent-To-Use Trademark Applications

There are at least two types of federal trademark applications. The first is a use-based trademark application, also known as a section 1(a) application corresponding to the section of the law that authorizes the application. The second type is an intent-to-use application also known as a section 1(b) application.

A use-based application is one where the applicant is already using the mark in commerce at the time when the application for federal trademark registration is filed. Use of the Mark in commerce can include shipping or selling the goods with the mark or rendering services after advertising those services with the Mark.

Intent-to-Use Based
An intent-to-use application is one where the applicant has not used the mark in commerce or business at the time that the application is filed. The intent to use application allows the applicant to reserve a trademark that they intend to use before actually using it.

This allows the applicant to stake a claim to rights in a name (or other mark) while doing the work that is required to bring the product or service to market. Many preliminary matters such as purchasing supplies, designing logos, designing graphics, designing packaging, and so forth may need to be completed before the product or service can be put on the market. Such activities might require a substantial lead time between the time when the trademark is selected and the time when the products or services are provided. Therefore an intent to use application allows an applicant to reserve a mark so that they do not have a problem running into others who are attempting to register the same or similar name while there working on their product/service start up activities.

A use-based application is for those already using the mark and an intent-to-use application is for those who plan to but are not yet using the mark.

What Happens After A Federal Trademark Application is Filed?

TrademarkApplicationFiled-001Generally an applicant should not be too concerned with how long it takes to obtain a federal trademark registration at the United States Patent and Trademark Office. Once your trademark application is filed, later filed applications by others are less of a concern. Further, in the United States, trademark rights accrue based not only on registration but also on use. Therefore simply by using your trademark in commerce you can begin to generate common law rights which you can assert even before you obtain a registration. This article will explain the process and the general timing of events after an application is filed.

Trademark Office Approval Is No Guarantee of Freedom to Use Mark
Approval of a trademark application by the U.S. Patent & Trademark Office (USPTO) does not guarantee that the use of the mark is clear, e.g. that your use will not infringe another’s trademark rights. This is true because, as mentioned above, a trademark user can generate common law rights by use alone, and the USPTO will not search for common law trademark usages that are not registered. Only a comprehensive trademark search can reveal information sufficient to provide advice regarding whether your use of a mark is clear.

If you’re concerned about another filing a trademark application before you begin using your trademark, you can file an intent-to-use trademark application. After the intent to use application is filed, you can begin using your mark without waiting for the trademark registration to issue. In fact there is almost no trademark reason to wait, after an application is filed, for a trademark registration to issue before using your mark. This is true because the USPTO’s granting a registration, as provided above, is not a bulletproof clearance for you to use your Mark. In certain circumstances a court can reverse the trademark office’s decision to grant a trademark registration if a prior trademark user has superior rights. If you need clearance assurance you should have a comprehensive trademark search conducted.

Filing to First Office Action or Allowance
After your trademark application is filed you should expect to hear back from the trademark office whether there is an objection or refusal to your application or whether it will be allowed within three to six months. Current USPTO stats provide the average time to first office action (first response from the USPTO) or allowance after filing is about three months.

Refusal or Objection
If there is a refusal or objection the USPTO will provide that to you in writing in the form of a Office Action. The Office Action will explain the time period in which a response is required. Generally a six-month time frame from the date of the Office Action is allowed for filing a response. A response can be filed earlier.

Refusals or objections provided in an Office Action maybe due to relatively simple formalities, such as the USPTO requiring a change to the description of goods/services provided in the application. In other cases refusals are based on an allegation by the Trademark Examining Attorney that your mark conflicts with another prior registered mark. Refusals based on an alleged conflict with another mark tend to require more involved responses than those regarding application formality issues.

If you receive a refusal or a rejection, the time until you receive a registration, if you’re successful in overcoming the refusal or objection, depends on how long you wait to file a response and how long the Trademark Office takes to consider and reply to your response. Further, in some cases it may be necessary to reply to multiple Office Actions issued by the trademark office or occasionally to pursue an appeal, all of which take more time.

If the USPTO does not issue a rejection or refusal or if you are successful in overcoming a rejection or refusal, then the USPTO will take an action based on the type of trademark application you have filed (use v. intent-to-use). If you filed a section 1(a) use-based application for registration on the primary register, then the USPTO will provide you with a notice that they will publish the application for opposition. Once the application is published for opposition anyone who believes they would be damaged by you receiving a registration has the opportunity to object to your application by filing an opposition. If no opposition is filed then the US PTO will take one of two courses depending on the type of application that is filed.

Registration or Notice of Allowance
If the application is a used based section 1(a) application then the USPTO will issue a certificate of registration within a few months after the end of the 30 day opposition period, if no opposition is filed. If the application is a section 1(b) intent-to-use application, then the USPTO will issue a notice of allowance within a few months after the end of the 30 day opposition period. The applicant will be given six months after the notice of allowance to file a statement of use proving that they are using the trademark in commerce. Extensions of time can be requested in six-month increments if the applicant cannot file a statement of use showing use of the mark within six months after the notice of allowance.

Currently it takes on average 10 months for a typical use-based trademark application to register and for a intent-to-use application to receive a notice of allowance. Your application could take longer or less time depending on if there is a refusal or objection or if the USPTO processes your application at a quicker or slower rate than average.

Should I File for a State or Federal Trademark Registration?

FederalTrademark_vs_StateTrademarkNow that you determined that you need to seek a trademark registration. The next question is what type of registration should you seek: a registration from your state or registration from the federal government? The answer is the federal government in most cases and here’s why.

State trademark registrations cost less. The government fees for state registration depend on the state but tend to be less than a federal registration. For example, an Illinois state trademark application has a $10 registration fee. Whereas a federal trademark application at the United States Patent & Trademark Office has a fee in the range of $275 to $325 per class of goods/services declared in the application.

Geographic scope
The scope of protection provided by state trademark registration depends on the state, but does not extend outside of the boundaries of the state. In contrast, a federal registration provides protection throughout the entire nation. So, while state trademark applications cost less you also get less protection.

Conflict with Federally Registered Marks
One problem with relying on a state trademark registration is that the U.S. Patent and Trademark Office (USPTO) will not check state trademark databases when reviewing applications for a federal trademark registration. Therefore, your state trademark registration will not block a party from obtaining a federal trademark registration on a mark that is the same or similar to yours. If someone has obtained a federal registration before you file and obtain a state registration, their federal registration will trump your state registration. Even if you obtain your state registration before a third party obtains a federal registration, your rights may be limited by the existence of the federal registration. The bottom line is that a state registration will not provide much benefit in the case of a conflict with a federal application or registration.

Problems with State Trademarks: the case of Burger King v. Hoots
The case of Burger King of Florida Inc. v. Hoots, 403 F. 2d 904 (7th Cir. 1968), shows how a state trademark registration will not hold up against a federal trademark registration, even if the state registrant is the first to use the mark within the state. In that case, Burger King (the well-known chain) sued Gene and Betty Hoots for operating a restaurant in Mattoon, IL under the name Burger King.

Hoots started their Burger King restaurant in Mattoon in 1957 and in 1959 they received a state trademark registration from Illinois, without knowledge of plaintiff Burger Kings’ prior use of the same mark. The plaintiff Burger King started in Florida in 1953 and was operating 29 stores in multiple states by 1957. The plaintiff Burger King filed a federal trademark application in September 1958 and received its federal registration over the Burger King mark in 1961. In the same year Burger King opened a restaurant in Skokie Illinois and had knowledge of the Hoots Illinois trademark registration at the time. Burger king continued opening restaurants and had 50 Burger King restaurants in Illinois in 1967.

Basically Hoots was the first to use the Burger King mark in Illinois and was first to register the mark in the State of Illinois.

The court found that the Hoots’ rights to use the Burger King mark were limited to the common law right in the geographic market area about their operation in Mattoon (20 mile radius around the Mattoon location). The court found that federal trademark law trumped state trademark law and the state law could not expand Hoots common law rights. The state registration did not give Hoots the right to operate anywhere in Illinois because that was beyond the area where the Hoots actually used the mark.

Even though Hoots was first to use the mark in Illinois, their state trademark registration was essentially worthless against a federal trademark that was obtained after they started using the Burger King mark in Illinois. This case shows the weakness of state trademark registrations.

Local Businesses and the Internet
If your business is strictly local, you might be considering a state trademark registration. One such example of a strictly local business might be if you have a restaurant and you have no plans to create a chain of restaurants that extended outside of your state. Before the rise of the Internet, the approach of seeking only state trademark protection on strictly local business had more merit (however it still had the risks of conflict with Federal marks listed above).

But now virtually every business has a website that is accessible from anywhere in the world. Therefore if you have a strictly local business and people are searching for your business on the Internet, it’s possible that your business name or trademark will conflict with another business located in a different locale. In other words, the presence and searching on the Internet creates the possibility that strictly local businesses will run into trademark conflicts online that they wouldn’t otherwise encounter. Some search engines attempt to provide search results based on the searcher’s location, however relying on the search engine algorithms to protect your brand is not recommended.

Border issues
Businesses located near the border of their state can also run into problems. State trademark rights do not extend beyond the boundaries of the state. So, if your business is located close to the boundary of your state and another business starts up across the boundary in another state, but close by, your state trademark registration will not be effective to stop them.

State trademark registrations are generally inexpensive but provide few benefits. Therefore if you’re interested in protecting your brand you should consider filing a federal trademark application if your circumstances allow.

Seventh Circuit Questions Usefulness of Trademark Surveys

CrackerBarrelThe Cracker Barrel Old Country Store (CBOCS) is a well known chain of restaurants. Kraft is a well-known manufacturer of food products sold in grocery stores, including a variety of packaged cheeses. Some of the packaged cheeses are sold under the trademark “Cracker Barrel.” Kraft sued CBOCS when it discovered that CBOCS planned to sell food products, such as packaged hams, in grocery stores under its logo, “Cracker Barrel Old Country Store.” Kraft Foods v. Cracker Barrel Old Country Store, No. 13-2559 (7th Cir. 2013).

Kraft objected only to the sale of products under the mark “Cracker Barrel Old Country Store” in grocery stores. It did not object to the sale of such products in the CBOCS restaurants or online. The district court granted a preliminary injunction prohibiting CBOCS from selling food products under the Cracker Barrel Old Country Store mark in grocery stores. The Seventh Circuit Appeals court agreed and upheld the injunction.

The 7th Circuit strongly questioned the usefulness of surveys in trademark lawsuits. Generally in a trademark dispute the question is whether there is a likelihood that the consumer would be confused to believe that the product/service of the junior user originates from the same source as the senior user’s product/service. One piece of evidence that a party may put forth is a survey of relevant consumers for showing whether confusion is likely.

Expensive Surveys
The problem with survey’s, aside from the issues identified by the Court, is that they can be expensive. An expert must be hired. The expert must plan a survey relevant to the case. The survey must be conducted. Then the expert must prepare a report with conclusions from the survey. Then the other party has the right to depose and otherwise attack the survey and its conclusions. All of the expert cost associated with surveys can total from $20,000 to over six figures depending on the case.

The Opportunity to Forgo Surveying
The court’s negative view of the value of surveys, as explained below, is helpful for litigants with limited budgets. If a litigant can dispense with the need to conduct surveys, the litigant can reduce costs substantially. Yet, forgoing evidence that could be supportive of the party’s position is always a risk. However, a party may decide to forgo a survey, particularly in the 7th Circuit in view of this Kraft Foods case.

General Problems with Surveys
The court started off with an overview of the problems with relying on surveys in trademark cases. The court stated that “Consumer surveys conducted by party-hired expert witness are prone to bias.” Citing several academic articles, the court continued, “There is such a wide choice of survey designs, none foolproof, involving such issues as sample selection and size, presentation of the allegedly confusing products to the consumers involved in the survey, and phrasing of questions in a way that is intended to elicit the surveyor’s desired response— confusion or lack thereof—from the survey respondents.”

Further referring to the academic articles, the court stated, “Among the problems identified by the academic literature are the following: when a consumers is a survey respondent, this changes the normal environment in which he or she encounters, compares, and reacts to trademarks; a survey that produces results contrary to the interest of the party that sponsored the survey may be suppressed and thus never become a part of the trial record; and the expert witnesses who conduct surveys in aid of litigation are likely to be biased in favor of the party that hired and is paying them, usually generously.”

The court concluded that generally, “All too often experts abandon objectivity and become advocates for the side that hired them.” This makes logical sense. A party will not hire an expert to give them a conclusion that damages the party’s position.

Professional Expert Witnesses
Turing the the survey in the Kraft Foods case, the court noted that Kraft’s Expert, Mr. Poret, appeared to be “a professional expert witness.” The court said that it would not hold this against him. However noting that Poret appears to be a professional expert witness implies a negative connotation. This appears especially evident when read in context with the court’s citation to academic literature to support the proposition that too often become advocates for the side that hired them.

Kraft Survey Problems
The Poret survey was conducted online via email. Poret emailed photos of CBOCS sliced spiral hams to 300 american consumer of whole-ham products and then asked in the email whether the company that makes ham also makes other products, and if so what products. About a quarter of the respondents said the company makes cheese. However the court was not convinced by this result noting that consumers could have guessed that the company makes other products because many companies have multiple product lines. Then the consumer could have guessed that the company made cheese.

Next, Poret showed “a control group of 100 respondents essentially the same ham, but made by Smithfield—and none of these respondents said that Smithfield also makes cheese.” The court noted that “Poret inferred that the name ‘Cracker Barrel’ on the ham shown to the 300 respondents had triggered their recollection of Cracker Barrel cheese, rather than the word ‘ham’ being the trigger.” The court found that the relevance of this conclusion was obscure. The court stated, “Kraft’s concern is not that people will think that Cracker Barrel cheeses are made by CBOCS but that they will think that CBOCS ham is made by Kraft, in which event if they have a bad experience with the ham they’ll blame Kraft.”

Validity of Online Surveys Questioned
Also the court question the validity of online surveys when drawing conclusions about products purchased in person in a store. The court said, “it’s very difficult to compare people’s reactions to photographs shown to them online by a survey company to their reactions to products they are looking at in a grocery store and trying to decide whether to buy.” The court continued, “The contexts are radically different, and the stakes much higher when actual shopping decisions have to be made (because that means parting with money), which may influence responses.” Online surveys are less expensive than in-person in-store surveys. However, this opinion counsels away from using online surveys when the products at issue are purchased in-person in a retail location.

Side-by-Side Statististical Sales Data Also Questioned
The court proposed using statistical sales data as an alternative to a survey. But then concluded that such statistical sales data would likely lack reliability necessary to support a basis to refuse “granting preliminary injunctions in trademark cases.” The proposed statistical data process would involve analyzing the actual sales of the two products at issue in the real world. “…in some of [the stores] Kraft Cracker Barrel cheese would have been displayed side by side with CBOCS hams plus similar meat products sold at comparable prices, while in other stores the cheese and hams would have been displayed in different areas of the store, and still other grocery stores would have carried CBOCS hams but not Kraft Cracker Barrel cheese.” The court stated that by examining the greater sales, if any, that “CBOCS hams obtained by proximity to the Kraft Cracker Barrel label, an expert witness might be able to estimate the extent of consumer confusion.” The greater boost in sales in those CBOCS hams in proximity to the Kraft Cracker Barrel cheese, the greater likely association of the CBOCS hams with the marker of the Cracker Barrel cheese. Still the court discounted this method in this scenario, stating, “nor have we such confidence in the reliability of such a study that we would think it an adequate basis for refusing to grant preliminary injunctions in trademark cases.”

Expert Testimony on Buying Habits And Consumer Psychology Suggested
There was one type of evidence that court would consider. The court noted that testimony of “experts on retail food products about the buying habits and psychology of consumers of inexpensive food products” would be illuminating in trademark cases. The court cited an academic article providing that “neither courts nor commentators have made any serious attempt to develop a framework for understanding the conditions that may affect the attention that can be expected to be given to a particular purchase.”

The courts criticism of trademark surveys is a benefit to litigants on a limited budget. While forgoing potentially favorable survey evidence is a risk, the opinion in this case provides authority for calling into question the other party’s survey conclusions.

Trademark Application Problems: Wrong Owner Named

While the United States Patent and Trademark Office (USPTO) provides online forms that appear to make it easy to file a trademark application, there are several portions of the application that can trip up an inexperienced applicant. One of those areas is the owner portion. The USPTO requires that the correct owner of the trademark be specified in the application to register the trademark. This sounds easy but in many cases it is not, as will be shown below.

Individual and Partnership Owner Problems
Take the case of American Forests v. Barbara Sanders, 1999 TTAB LEXIS 529 (TTAB 1999). In this case, Barbara Sanders filed a trademark application to register LEAF RELEAF to be used with the goods of leaf bag equipment. The application named herself individually as the owner/applicant.

Later another company, American Forests, filed an opposition seeking to prevent Barbara Sanders from receiving a registration over LEAF RELEAF. American Forest alleged (1) that LEAF RELEAF was confusingly similar to its trademarks GLOBAL RELEAF and RELEAF and (2) that the application named Barbara Sanders as the applicant/owner but that Sanders did not have a bona fide intent to use the mark. The second issue is the focus of this article. During a deposition Barbara Sanders admitted that she intended to use the LEAF RELEAF, not by herself individually, but together with her husband. In other words she intended to sell products under the LEAF RELEAF together with her husband in a partnership and not on her own.

It is a general principle of law that when two or more people join together for the purpose of making a profit, they have formed a partnership. This can be true even if there is no written agreement between the two or more people. Further, Barbara Sanders used the word partnership to describe her and her husband’s affiliation regarding the products to be sold. Therefore, the proper applicant for the trademark application was the partnership comprised of Barbara Sanders and her husband.

Section 1 of the Trademark act requires that the application be filed in the name of the trademark owner. When the owner named on the application is not the person or entity that intends to use the mark or actually is using the mark, then the application is void and the registration will be refused. See also Trademark Manual of Examining Procedure § 803.06.

In the American Forests case, Barbara Sanders’ application was found to be void and Sanders lost the opposition and her application. The rule is rather strict. You see here even though Barbara Sanders was going to be using the mark (together with her husband), she was not the proper owner because it was actually a partnership between her and her husband that was legally recognized as intending to use the mark.

Start-up Owner Problems
Another situation where this issue arises is in start-ups. Often an entrepreneur will come up with a name for their company or product before the company (LLC or Corporation) is legally formed. Once a name is chosen early filing of an intent-to-use trademark application is encouraged so that someone else doesn’t file an application on the same or similar name and block you from using your name. However, if an entity is not yet formed, filing an application in the name of a non-existent entity is not a good idea. And, if the individual does not intend to sell products/services himself or herself before the legal entity is formed then, like in the American Forests case, the individual or individuals would not be proper applicants.

Who is the Owner?
A good question to ask to determine the owner is: who will receive revenue from the first sales? If it is a company, then the company should be the applicant. If the company is not formed, then it may be necessary to first have the company legally formed. Then a trademark application can be filed in the name of the company that will own, control, and realize revenue from the sale of products/services under the mark.

Exceptions for Minor Errors
Some exceptions exist that allow minor errors in the owner’s name to be corrected. However it is best to ensure the owner is properly named. You should contact a trademark attorney to determine whether errors in your case are correctable.

Circumstances of your company or start-up enterprise need to be considered in order to determine who should be named as the owner on a trademark application and whether other steps (e.g. forming the legal entity) are needed before a trademark application is filed.