Should I Claim Color In My Trademark Application?

FedExIf your trademark or logo includes color, then you may wonder whether your federal trademark application should include a claim of color. If this is your first trademark application, then likely you should not make a claim for color. When no claim of color is made and the trademark is presented in black and white then the registration is presumed to cover the mark when presented in any color.

However, if color in your mark is very important so that you would want the best chance of stopping others using your color scheme with different words/characters, then you may want to make a claim for color in your trademark. For example, Federal Express has a trademark application and various registrations on the mark FedEx with “Fed” claimed in purple and the “Ex” claimed in orange. Therefore, it might be possible for FedEx to claim that the use of “LadFx” infringes its trademark, if LadFx was presented in the same color scheme where “Lad” was in purple and “Fx” was in orange. This claim is not guaranteed, but FedEx would have a better chance if they have a registration claiming color, than if they did not.

However, these registrations claiming color where not the first trademark registrations that Federal Express filed. Instead, one of Federal Express’ first trademark registration, filed in 1984, did not make any claim for color. This registration from 1984 provides a standard character claim to “FEDEX,” alone without any claims to style or color. Standard character marks cover the words/characters presented in any font stylistic arrangement or color. Therefore standard character marks can be considered broader than special form marks claiming style elements, logos, or color.

If you look at other brands you’ll find the same pattern. When a company files a trademark application claiming color, often this is not their first application. Many times the company first files a trademark application claiming only standard characters or a logo without color and then later they file a subsequent trademark application(s) claiming color:

  1. Startbucks, first standard characters, later a color logo;
  2. Google, first standard characters, later claims of color;
  3. Subway, first standard characters, later claims of color;
  4. Apple logo, first the logo with no claim of color, later claims over apple logo with horizontal color stripes.

MSNBC filed a trademark application claiming standard character mark on the same day that it also filed a separate application claiming color (Why companies have multiple trademark registrations on the same mark?).

According to a search of the USPTO records, other brands have not bothered to claim color in trademark registrations on their names, such as, T-Mobile, IBM, and Harley-Davidson Motorcycles.

Generally the words / standard characters of the mark are more distinctive (if the words / standard characters are not distinctive, consider combining the words with style or logo elements as a special form mark). So the words/characters of the mark tend to be more important than the color elements of the mark. Therefore, for your first federal trademark application you should probably not make a claim for color, unless color is very important. And if color is very important, you may want to consider filing two applications, one as standard character and one claiming color.

Trademark Clearance Searching, Why Searching USPTO is Not Clearance

TMBefore using a mark or applying for a federal trademark registration, it is usually a good idea to first perform a search to determine if others are using the same or similar trademark to yours. The U.S. grants trademark rights based on use alone and not only on registration. Therefore, searching the USPTO trademark database alone is not sufficient to determine whether your mark is clear for use. As explained below, you need to have performed a comprehensive trademark search to be sure your proposed trademark is clear for use. You can think of trademark searching as insurance against the risk that someone will later assert the use of your mark infringes their prior rights, which may result in legal and name change costs.

The Problem with Not Searching
If you begin using your mark without searching, someone else may have superior rights in the same or similar name so that your use is an infringing use. If you are successfully sued by a trademark owner for using its trademark, you may be forced to stop using the trademark. Stopping the use of the mark could be expensive. Consider the need to change items having the mark, including advertisements, signs, letterhead, business cards, brochures, packaging, marked products, and your website. In addition, a court can hold a willful infringer liable for increased damages and require the infringer to pay the trademark owner’s attorney’s fees. In short, the risks of not searching include the hassle and expense of a name change and possible legal costs.

Rights Based on First Use, USPTO Approval is not Clearance
The trademark search should be a comprehensive search, which includes federal trademark registrations, state trademark registrations, and common law trademark usages. A broad search is needed because in the United States trademark rights can be obtained by use alone. A registration is not necessary for a person or entity to obtain trademark rights. Therefore, searching the U.S. Patent and Trademark Office (USPTO) trademark database is not sufficient to determine whether your use of a mark is clear. Someone could have gained superior rights in the mark by use without registering.

Common Law Trademark Rights
U.S. common law provides rights based on use because trademarks are designed to prevent consumer confusion. Therefore, in one example, the law grants rights to trademark users where the relevant purchasing public has come to recognize a particular trademark as representing a source of particular goods/service, even if that trademark is not registered. This rule protects consumers, but increases the search burden on companies because searching the USPTO database may not find all relevant uses of a mark.

Further, even if the USPTO grants you a trademark registration on your mark, that is no guarantee that you can use your mark. This is true because, as stated above in the U.S. trademark rights can be generated based on use alone without any registration. The USPTO will only check the USPTO database and will not check state databases, the internet, or common law usages to see if someone else has used the same or similar mark for the same or similar goods and service as you.

If a prior user has superior rights, in some circumstances, the prior user can seek to have your trademark registration canceled along with demanding you stop using the mark. In other circumstances, the prior user might have trademark rights in the geographic area that they were operating in before you registered. Such rights might prevent you from expanding to market and sell in that area. The only way to know that you are clear to use your mark throughout the U.S. is to have a comprehensive trademark search performed. Therefore, you cannot rely on the USPTO’s approval of your mark as clearance.

Further, it could take between six months and a year to obtain a trademark registration. See current trademark pendency times here. If you tried to rely on the USPTO’s approval, you would have a long wait time before you knew whether you could use your mark. This timeframe is too long for most companies wanting to launch a product or service with a name. Companies want to know quickly whether the chosen name is clear. If you have a comprehensive search preformed you will generally know within a few weeks or less whether it is clear to use the mark.

Comprehensive Searching
The comprehensive search should include direct hits (identical wording/characters) as well as marks that are similar or might lead to consumer confusion. This search frequently includes searching for homonyms, synonyms, phonetic equivalents, alternative spellings, anagrams, marks with similar components, and marks that start or end the same, or that have other similarities. A comprehensive search may look in federal and state trademark databases, online databases, trade directories, product catalogs, internet domain names, and the like. The goal is to find an actual use of the proposed mark, or a similar mark, whether or not it is officially registered.

Preliminary Searching at USPTO

While preliminary searching the USPTO database is not sufficient to determine whether a use of a mark is clear, it is a good first step. If during a preliminary search at the USPTO you find that the same or similar mark is registered for the same or similar goods, then you don’t need to go on with the comprehensive search. Instead you can go back to the drawing board and come up with a different name.

To determine whether there is a conflict between marks, courts use several factors, including the similarity of the marks and the similarity of the goods/services. The same or similar marks can co-exist in certain circumstances where the goods or services offered under the marks are sufficiently different. In other words, if the goods/services you intend to provide are sufficiently different from the goods/services offered by the registered trademark holder, then you might be able to use and register your mark without a conflict. Determining whether the difference between marks and between the goods/services is sufficiently different is very circumstance depended. You should consult with an attorney on this question when you find a similar mark.

You can perform preliminary trademark searching on your own at the USPTO:

  1. go to www.uspto.gov;
  2. select Trademarks;
  3. select Search Trademarks;
  4. then search for related trademarks by selecting Basic Word mark Search, or Word and/or Design Mark Search;
  5. click on help button for more information on search methods and syntax.

Conclusion
Comprehensive trademark searching is an important step in determining whether a trademark is clear for use. Searching the USPTO trademark database is a good first step, but is not sufficient to determine whether the use is clear. This is true because trademark rights can be acquired by use alone, and unregistered uses will not be discovered by searching only the USPTO trademark database.

What is a Trademark: Usual and Exotic

CircleR_RegisteredTMA trademark includes almost anything that is used by a person or entity to identify a product or service. This includes product names, company names, logos, slogans, service names, slogans, taglines, colors, product packaging, product shapes, symbols, sounds, fragrances, flavors, and domain names. A trademark functions to identify and distinguish goods and services from those manufactured, sold, or provided by others and to indicate the source of the goods or services, even if the source is unknown. Trademark registrations can be renewed forever as long as they are being used with the corresponding goods or services in commerce.

Below are several types of trademarks. First are the standards word and logo marks and the more exotic marks like sounds, product shape, and fragrance, among others, follow. Click here to skip straight to the exotic stuff.

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 character(s) 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. A standard character mark is sometimes known as a word 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.

For factors to consider when determining whether to seek a trademark registration on a word mark or a logo mark, see this post.

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.

Sounds
A sound or sounds can function as a trademark. Sound marks function as trademarks when they are arbitrary, unique, or distinctive and create in the hearer’s mind an association of the sound with a good or service. One example of a registered sound mark are the NBC chimes.  U.S. Trademark Reg.  No. 916,522 on the NBC chimes describes the mark as:

a sequence of chime-like musical notes which are in the key of C and sound the notes G, E, C, the “G” being the one just below middle C, the “E” the one just above middle C, and the “C” being middle C, thereby to identify applicant’s broadcasting service.

Below is a Youtube clip of the NBC Chimes.

 

Motorcycle Exhaust Sounds
HarleyDavidsonHarley Davidson attempted to obtain a trademark registration over the exhaust sound of its motorcycles in Trademark Application No. 74/485,223, but the application was ultimately denied by the Trademark Trial and Appeals Board.

DucatiItalian motorcycle manufacturer, Ducati, also attempted to obtain a trademark registration over the exhaust sound of its motorcycles in Trademark Application No. 76/330,675, but gave up on the application after an initial refusal by the Trademark Examining Attorney.  These cases do not mean that motorcycle exhaust sound could never be a registered trademark, but only that the exhaust sounds in these particular cases did not qualify or that the applicant did not pursue further appeals to contest the these rulings.

Pink
Owens Corning Corporation’s Pink Insulation

Color Marks
Color marks are mark that consist solely of one or more colors used on particular objects. Therefore a color mark is different from the “MOBILE” example above were color is claimed as an element of a special form mark. With a color mark for goods, the color can be used on the entire surface of the goods, on a portion of the goods, or be used on all or part of the product packaging. Similarly, service marks may consist of color used on all or part of materials used in the advertising and rendering of the services.

It is more difficult to show that color functions as a trademark as compared to other types of trademarks. This is because color cannot be inherently distinctive. Which means that an applicant must prove that the color has acquired distinctiveness such that customers associate the color with a single source of the goods or services.

The Owens Corning corporation owns U.S. Trademark Reg. No. 2,380,742 over the color pink as applied to building insulation.

CocaColaBottle
Tm. Reg. No. 1,057,884

Trade Dress: Product Shapes and Product Packaging
The shape of a product and the packaging of a product or service can act as a trademark. When a product shape or product packaging functions as a trademark it is known as trade dress. One example of product packaging trade dress is the classic Coca Cola bottle shape. Coca Cola has a registered trademark (Trademark Reg. No. 1,057,884) over the shape of the classic Coca Cola bottle.

iPhoneTradeDressReg
Tm. Reg. No. 3,457,218

An example of product design trade dress is the configuration of the iPhone being rectangular with rounded corners as shown in Trademark Reg. No. 3,457,218.

For a more detailed discussion of trade dress see this article.

Scent, Fragrance, or Flavor
It is possible to gain trademark protection over a scent, a fragrance, or a flavor as long as it is not functional. Scents that serve a functional purpose, such as perfume or air freshener, are not registrable. A showing that the scent, fragrance, or flavor has acquired distinctiveness must be made such that customers associate the scent, fragrance, or flavor with a single source of the goods or services. The showing is necessary because generally scent, fragrance, or flavor is seen as a functional characteristic of the goods/services by the public and not as a trademark. In other words, more evidence is needed of acquired distinctiveness with these types of marks than with distinctive word marks.

One example of a trademark registration over a scent is U.S. Trademark Reg. 2,463,044. In the ‘044 registration, an individual operating as Manhatten Oil has a registration on a cherry scent used with “synthetic lubricants for high performance racing and recreational vehicles.” This registrant has another registration on the supplemental register over a strawberry scent for “lubricants and motor fuels,” and this appears to be the commercial product.

A Placement Mark
NorthFaceShoulderWhen you see a logo on the right shoulder of the back exterior of a garment, even if you can’t make out the details of the logo, do you recognize that logo placement to be associated with North Face? If so, North Face may have developed trademark rights in the placement of any logo in that location. Yet, in 2008 the USPTO was not satisfied that North Face met the requirements for registered trademark protection over such logo placement.

North Face Apparel Corp. attempted to obtain a registration on the “placement of a stitched logo affixed to the right shoulder of the back exterior of [any] garment” in Trademark Application No. 78/622,759. North Face was seeking a trademark registration that would allow it to prevent others from placing of any stitched logo on the right shoulder of the back exterior of any garment.

In refusing the application, the Examining Attorney asserted that the placement mark did not function as a trademark and was merely ornamental. North face responded by noting that the USPTO has granted other placement marks. For example, Registration No. 2,058,448 consists of “the placement of a single stone in a center setting positioned at the bottom of the ring” and Registration No. 3,106,789 consists of “the placement of two iterations of a paw design on the bottom of a pet shoe.” (Both of these registrations are now expired because the applicants failed to renew them). Further, North Face argued that it was the only company that provided the placement of a logo on a right shoulder of the back exterior of apparel and that it had been doing so for 17 years. Therefore, North Face argued such placement is widely recognized as associated with North Face and deserved registered trademark protection.  The Trademark Examining Attorney maintained the refusal of the application and North Face later dropped its appeal to the Trademark Trial and Appeals Board.

Conclusion
Almost anything that indicates a source of goods or services can act as a trademark. Above are some examples of the various types of items that can achieve trademark protection.

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:

iPhoneInfinityPool
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.

Conclusion
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?

CocaColaBottle

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.

NavyChair
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 .

iPhoneTradeDressReg
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.

IphoneColor
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.

Conclusion
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.

Location
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: http://rev3dupage.com/events/?ee=12.

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.

Use-Based
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.

Conclusion
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.

Publication
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.

Conclusion
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.