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Psyche Out the Trademark Office and Get What You Want

By Susan Horwitz, Member, Russo & Hale LLP

The Trademark Selection Process
This article is intended to provide a brief overview of the trademark selection process from a legal standpoint in order to successfully obtain a federal trademark registration. While a party may obtain common law trademark protection without registration of a mark, the protection afforded, and the ability to recover damages or attorneys’ fees for infringement is significantly limited without actual registration of the mark. Trademark law allows a company to obtain registration of a mark which would otherwise be seen as descriptive or too confusingly similar to another mark if the registrant can make a showing that the mark has taken on "secondary meaning", or strong association with the company, in the public's eye. This information will help you to better understand the likelihood of obtaining a registration in your mark(s).

I. Legal Restrictions on Registration

Not every mark will qualify for trademark protection. Since one of the purposes of trademark law is to avoid confusion in the marketplace, the law places restrictions on how close a given name can be to other names already being used, or to names which are so descriptive of what they are associated with that they fail to provide the necessary indication of the unique source of the goods. A body of statutory and case law has emerged to narrow what will qualify as a registrable mark1. It is these restrictions, which a company looking to register a mark must consider in making an initial determination of whether a proposed mark will be protectible.

Among the two primary restrictions are the following:

A Merely Descriptive
If a mark is seen as being "merely descriptive" or "deceptively misdescriptive" of the goods or services with which it is associated, it may be refused registration. Marks vary in strength along a spectrum from “fanciful” and “arbitrary” marks, which are highly distinctive and “strong,” to descriptive and generic marks, which are closely linked to the goods and services with which they are used and which are “weak.” The stronger the mark, the better it will serve to distinguish an owner’s goods and services, and the easier it will be to obtain registration. Generic terms are not protectable as marks and descriptive terms are protectable only if a secondary meaning has developed. Suggestive, fanciful and arbitrary marks are highly protectable.

A fanciful mark is one that has been coined for the sole purpose of functioning as a mark; i.e., Kodak, Exxon. An arbitrary mark is a normal word used in an uncommon way; i.e., Apple (for software). A suggestive mark, although less strong than fanciful or arbitrary, is still highly protectable. A suggestive mark suggests qualities which are desirable for a product but which do not literally describe attributes or qualities of the goods or services with which they are associated; such as Ivory, suggesting purity, for soap, or Greyhound, suggesting speed or sleekness, for bus transportation. A descriptive mark describes, rather than suggests, the qualities of the product or services in connection with which they are used. They are much weaker trademarks and may not be protectable unless they acquire secondary meaning (acquired distinctiveness)2. A generic mark is the weakest mark and is really not a “mark” at all, but common product or service names; i.e., plastic, wine, company.

B Likelihood Confusion
A second restriction upon the registration of a mark is that a mark will not be registrable if it "so resembles a registered mark as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to deceive." The Trademark Office considers several factors in making a determination including similarity as to the marks, the nature of the goods, trade channels of the goods, the number and nature of similar marks in use on similar goods, etc.


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