🚨 Did you know that your trademark can be refused registration by the USPTO for being weak? ⚠️
Yes, your name doesn’t even have to be the same or confusingly similar to someone else’s to be refused registration. Not all trademarks offer the same protection. You have to consider your mark strength because the USPTO can issue a refusal for being “merely descriptive” or even “geographically descriptive.” Yes, different names, terms, and slogans have different strengths in trademarks.
Major key 🔑 for choosing a name for federal trademark registrations: The more distinct your name is, the more protection your name has, which means the less it could cost you down the road.
But how can you know if your name is descriptive? Ask yourself these questions:
- Does my term describe an ingredient of the goods?
- Does my term describe an quality of the goods or services?
- Does my term describe any characteristics of the goods or service?
- Does my term describe the use of the goods or services?
- Does my term describe the purpose of the product or service?
- Does my term describe a function of the product or service?
- Does my term describe a feature of the product or service?
If you are answering yes to these questions, then you may be using a descriptive term. Here are some examples of descriptive terms and that the USPTO has refused:
- BED & BREAKFAST REGISTRY was held merely descriptive of lodging reservations services;
- APPLE PIE was held merely descriptive of potpourri;
- COASTER-CARDS was held merely descriptive of a coaster suitable for direct mailing;
- MALE-P.A.P. TEST was held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer;
- BATTLECAM was heldmerely descriptive for computer game software;
- SCHOLASTIC was held merely descriptive of devising, scoring, and validating tests for others despite the presence of other marks on the Register using the word “Scholastic”
- SCREENWIPE was held generic as applied to premoistened antistatic cloths for cleaning computer and television screens
- URBANHOUZING was held merely descriptive of real estate brokerage, real estate consultation, and real estate listing services
- BOBBLE POPS was held merely descriptive for “candy,” which the record showed was a lollipop candy featuring a bobble head device
What are descriptive trademarks?
A mark is considered to be merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristics of an applicant’s goods or services. Determining whether a mark or term is descriptive has to be viewed in relation to the goods or services for which you are seeking trademark registration. For example, APPLE is arbitrary to the goods of computers, hence qualifies as a distinctive and non-descriptive trademark. Also, similar rules apply to logos as well as all Trademarks not just terms.
How to be Fancy?
Fanciful names are completely made up. They are sometimes referred to as “Coined” words. (Nothing crypto-related but check out my article on NFTs). Examples are Exxon, Kodak, Lexus, and Verizon. The thing about fanciful marks is that they aren’t known to any and they have no meaning because you made it up. You have to market or brand the new term so it gets adopted and well known. Fanciful marks are the strongest mark and have great success in becoming federally trademarked.
💡Here’s a tip:
Some people think trademarks come into play later on in your business when you’re more established & making money. Contrary to this belief, the best business strategy is actually to think about trademarking right at the start, when you are already spending money for branding your business. This way you can choose a name that will not only give you the most protection but will cause fewer issues with the USPTO when you decide to file your trademark application.
Whether you’re thinking about filing a trademark for your business or working on your brand strategy, speaking with a lawyer can give you tons of professional insight. Karana IP is here to help make this process easier for you! Send an email, shoot Alex a text at 248-622-3233, or schedule a Free Consultation.