Dodging Obstacles in Federal Trademark Registration – Part 1

Part 1: Trademark Priority and Trademark Distinctiveness

United States trademark law is unique and different compared to trademark law in foreign countries and what may seem like common sense. Whether an individual is new to the area of trademark law as a whole, or a foreigner is thinking about filing a U.S. Federal Trademark Application, these common mistakes can be fatal and/or costly to any trademark application.

(1) Trademark Priority in the United States

Trademark priority is a complex and oftentimes misunderstood principle of trademark law. Trademark rights in the U.S. are based on use, not registration. Thus, registration of a trademark with the United States Patent and Trademark Office (USPTO) does not guarantee the registered owner priority to use their mark. In other words, being the first to file a federal trademark, does not necessarily give you the absolute right to use your trademark. Under U.S. common law (law generated by judges, rather than by statutes) the date on which a trademark is first used by the owner decides who has priority to use that mark. While common law trademark rights only extend to the geographic area the mark is used, one benefit to federal registration is that the registered mark is given a presumption of nationwide priority of use as of the date of filing the federal application. This can create a complex priority battle between two trademark owners if both marks are confusingly similar.

For example, say John begins using a trademark as of January 1, 2014 in the Northwestern U.S. but never registers his mark (he has a common law trademark). Jane files a federal trademark application for a confusingly similar trademark on January 1, 2015, which successfully registers. John and Jane get into a legal battle over who has priority, or the right, to exclusively use the trademark. Under this scenario, John would have the exclusive right to use the mark in the Northwest, but nowhere else. Jane would have the exclusive right to use the mark every else in the U.S.

Now, suppose John files a federal trademark application on January 1, 2014, and it takes two years to complete the registration process (registration certificate will be issued January 1, 2016). During the registration process, Jane decides to start using a confusingly similar trademark, only in the Southeastern U.S., on January 1, 2015. If John’s trademark is registered on January 1, 2016, his priority date becomes the date of FILING the application. Thus, John has nationwide priority of use over the trademark as of January 1, 2014, which is prior to Jane’s use. At this point, John has the right to stop and prohibit Jane’s use of the confusingly similar trademark.

These two scenarios can be what are confusing to many entrepreneurs and business people, foreign and domestic. When dealing with a potential priority battle or when attempting to clear the availability of a trademark, both common law and federal statutes combine to form the basis of who will have the right to use a trademark, and how far those rights extend.

(2) Trademark Distinctiveness

The extent to how far trademark rights extend will be partially determined on how distinctive a trademark is. This is all based on where the trademark appears on the spectrum of distinctiveness. From not protectable to weak to strong, the spectrum is as follows: generic marks, descriptive marks, suggestive marks, and arbitrary/fanciful marks. Thus, one key question is always where the trademark appears on this spectrum.

Generic marks are never afforded protection. These are marks that identify the actual name or category of the goods/services. Ex. Attempting to trademark the term Sk8Board for your product line of skateboards.

Next are descriptive marks. These are marks that immediately identify a quality, character, function, or feature of the goods/services provided with the trademark. Ex. Attempting to trademark the term Quick Ship for a product delivery service. The term describes a characteristic of the service; that you will quickly ship and deliver the product. Descriptive marks are not initially afforded full trademark registration. Once a descriptive mark obtains secondary meaning, then the mark can become registered.

Suggestive trademarks are marks that suggest a quality, character, function, or feature of the mark. Typically this involves some leap of imagination to connect the mark to the goods/services. Ex. Airbus for airplanes. Suggestive trademarks are instantly eligible for federal trademark registration.

Arbitrary and fanciful marks are the strongest marks on the spectrum of distinctiveness. Fanciful marks are made up words, or words that have no other meaning than acting as a trademark. Ex. Kodak for a camera. Arbitrary marks are terms that are not made up words, but the term has nothing to do with the goods/services. Ex. Apple for computers, music players, and phones.

When a company, entrepreneur or inventor is thinking about starting a new brand or product, it is important to think about the spectrum of distinctiveness. Ensuring that a proposed brand or product name is instantly eligible for federal trademark registration can greatly reduce the costs and time it takes to obtain a federal registration.

Our Charleston trademark attorney has assisted small businesses, corporations, and entrepreneurs avoid such obstacles through federal registration.  If you have any questions or need help navigating the federal trademark registration process, contact our firm today!

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