1 00:00:06,840 --> 00:00:16,600 [Music] 2 00:00:27,130 --> 00:00:31,679 Hi there and welcome to the Trademark Information Network's Basic Facts Breakdown. 3 00:00:31,679 --> 00:00:33,040 I'm Mark Trademan. 4 00:00:33,040 --> 00:00:37,309 During the next few minutes, we're going to discuss a fundamental consideration that is 5 00:00:37,309 --> 00:00:43,250 often overlooked – how to select a trademark that is both federally registrable and legally 6 00:00:43,250 --> 00:00:44,490 protectable. 7 00:00:44,490 --> 00:00:48,470 With this knowledge, you just might save yourself some valuable time and money. 8 00:00:48,470 --> 00:00:52,650 Now, you might already have a pretty good idea of what you want your mark to be. 9 00:00:52,650 --> 00:00:58,040 In fact, you might be 100% certain that the mark you have now is the one you want to register. 10 00:00:58,040 --> 00:01:02,720 Or, perhaps you're in the initial stages of creating your mark and are just brainstorming 11 00:01:02,720 --> 00:01:03,820 ideas. 12 00:01:03,820 --> 00:01:06,100 In either case, keep watching. 13 00:01:06,100 --> 00:01:11,229 The concepts we're going to discuss are the same ones that the USPTO examining attorneys 14 00:01:11,229 --> 00:01:16,810 apply when examining your trademark application to determine whether your mark may be registered. 15 00:01:16,810 --> 00:01:22,390 The concepts will help you figure out whether you can 1) register your mark with the USPTO 16 00:01:22,390 --> 00:01:26,299 and 2) enforce your rights once the mark is registered. 17 00:01:26,299 --> 00:01:27,299 Ready? 18 00:01:27,299 --> 00:01:28,299 Let's get started... 19 00:01:28,299 --> 00:01:32,590 The first thing we need to do is remind ourselves what a trademark is and what it does. 20 00:01:32,590 --> 00:01:39,619 A trademark is generally a word, phrase, slogan, symbol, or design, or combination thereof, 21 00:01:39,619 --> 00:01:43,619 that identifies the source of your goods and services and distinguishes them from the goods 22 00:01:43,619 --> 00:01:48,569 and services of another party; that is, a trademark lets consumers know that the goods 23 00:01:48,569 --> 00:01:53,350 and services come only from you and not from someone else. 24 00:01:53,350 --> 00:01:58,530 Let's see how "identifying source" and "distinguishing source" play into selecting a mark. 25 00:01:58,530 --> 00:02:04,729 We’ll discuss two primary issues: likelihood of confusion and strength of the mark. 26 00:02:04,729 --> 00:02:09,060 First, let's look at the concept of "likelihood of confusion." 27 00:02:09,060 --> 00:02:15,080 Essentially, a "likelihood of confusion" exists when 1) the marks of the parties are similar 28 00:02:15,080 --> 00:02:19,870 and 2) the goods and services of the parties are related in such a way that consumers are 29 00:02:19,870 --> 00:02:24,130 likely to believe they come from the same source. 30 00:02:24,130 --> 00:02:29,670 That is, the marks look alike, sound alike, have similar meanings, or create similar overall 31 00:02:29,670 --> 00:02:31,790 commercial impressions. 32 00:02:31,790 --> 00:02:36,580 And the goods and services are identical or are related in such a way that consumers would 33 00:02:36,580 --> 00:02:41,160 be likely to assume that only one company provides all of the goods and services when, 34 00:02:41,160 --> 00:02:45,170 in fact, the goods and services come from more than one source. 35 00:02:45,170 --> 00:02:50,530 Remember, even identical marks may be registered if used on goods and services that are not 36 00:02:50,530 --> 00:02:52,730 related, unless the mark is famous. 37 00:02:52,730 --> 00:02:55,880 Let's take a look at an example. 38 00:02:55,880 --> 00:03:02,480 Let's say your mark is "T.MARKEY" (T-period-M-A-R-K-E-Y) for "shoes." 39 00:03:02,480 --> 00:03:10,040 Another party has registered the mark "TEE MARQEE" (T-E-E-space-M-A-R-Q-E-E) for "shirts." 40 00:03:10,040 --> 00:03:15,740 Here, a likelihood of confusion exists because the marks sound identical and because the 41 00:03:15,740 --> 00:03:17,000 goods are related. 42 00:03:17,000 --> 00:03:20,340 In particular, when spoken, the marks sound similar. 43 00:03:20,340 --> 00:03:25,880 There is no correct pronunciation of a mark, so both marks can be pronounced "T.MARKEY," 44 00:03:25,880 --> 00:03:29,230 even though one party may have intended the mark to be pronounced differently. 45 00:03:29,230 --> 00:03:35,580 With regard to the goods, even though "shoes" and "shirts" are not identical, they are related 46 00:03:35,580 --> 00:03:39,570 because consumers are accustomed to seeing both "shoes" and "shirts" being made by the 47 00:03:39,570 --> 00:03:40,910 same companies. 48 00:03:40,910 --> 00:03:45,400 So, when you are selecting a trademark for your business, be careful not to select one 49 00:03:45,400 --> 00:03:48,770 that causes a likelihood of confusion with another mark. 50 00:03:48,770 --> 00:03:54,100 Your application will be rejected by the USPTO and you could open yourself up to an infringement 51 00:03:54,100 --> 00:03:56,840 law suit by the owner of the other mark. 52 00:03:56,840 --> 00:04:01,350 Instead, it's safer to do a search for similar marks that are used on related goods and services 53 00:04:01,350 --> 00:04:02,350 before filing. 54 00:04:02,350 --> 00:04:08,180 This is called a "clearance search" and involves searching federal and state trademark registration 55 00:04:08,180 --> 00:04:09,380 databases. 56 00:04:09,380 --> 00:04:14,800 It also involves a search for common-law unregistered trademarks by searching the Internet for websites 57 00:04:14,800 --> 00:04:20,000 and articles involving similar marks being used for goods and services related to yours. 58 00:04:20,000 --> 00:04:24,160 For more information on searching and likelihood of confusion, be sure to watch the Trademark 59 00:04:24,160 --> 00:04:29,220 Information Network news broadcast called "SEARCHING" and consider hiring a trademark 60 00:04:29,220 --> 00:04:31,970 attorney for assistance. 61 00:04:31,970 --> 00:04:35,620 Selecting a mark that avoids a likelihood of confusion will go a long way toward making 62 00:04:35,620 --> 00:04:39,940 sure your mark "distinguishes the source" of your goods and services. 63 00:04:39,940 --> 00:04:45,710 Now, to address "identifying the source" of your goods and services, let’s turn to our 64 00:04:45,710 --> 00:04:49,860 second main concept, the strength of the mark. 65 00:04:49,860 --> 00:04:54,160 In a legal sense, a strong trademark is one that allows you to more easily prevent other 66 00:04:54,160 --> 00:04:59,700 parties from using your mark and it is one that is easier to protect than "weaker" marks. 67 00:04:59,700 --> 00:05:04,270 A simple way to think about weak and strong marks is to picture a gauge that goes from 68 00:05:04,270 --> 00:05:07,639 weak to strong, or cold to hot. 69 00:05:07,639 --> 00:05:10,680 The hotter the mark, the stronger it is! 70 00:05:10,680 --> 00:05:14,490 The coldest or weakest marks aren't even really marks at all. 71 00:05:14,490 --> 00:05:18,150 They are generic words that are incapable of identifying source. 72 00:05:18,150 --> 00:05:23,540 Think "BICYCLE" for "bicycles" or "MILK" for "a dairy-based beverage." 73 00:05:23,540 --> 00:05:29,520 These are common, everyday names for goods and services and are not registrable by themselves. 74 00:05:29,520 --> 00:05:33,610 Descriptive terms are warmer than generic terms, but are still very hard to protect. 75 00:05:33,610 --> 00:05:37,870 Descriptive terms directly tell you something about the goods and services and generally 76 00:05:37,870 --> 00:05:42,990 are not registrable without showing that a mark has, through long use, become a source 77 00:05:42,990 --> 00:05:43,990 identifier. 78 00:05:43,990 --> 00:05:50,320 Think "CREAMY" for "yogurt" or "THE ULTIMATE BIKE RACK" for "a bicycle rack." 79 00:05:50,320 --> 00:05:55,210 These words merely describe a feature or quality of the goods and services. 80 00:05:55,210 --> 00:05:59,380 Descriptive marks are harder to register and protect because they merely provide information 81 00:05:59,380 --> 00:06:01,110 about the goods and services. 82 00:06:01,110 --> 00:06:05,960 They don't "identify the source" of goods and services and "distinguish the source" 83 00:06:05,960 --> 00:06:09,060 of the goods and services from others. 84 00:06:09,060 --> 00:06:13,360 Moving along to suggestive marks, this is where things start to get warm. 85 00:06:13,360 --> 00:06:19,030 As the name implies, they "suggest" qualities or characteristics of the goods and services, 86 00:06:19,030 --> 00:06:20,870 without actually describing them. 87 00:06:20,870 --> 00:06:26,130 Think "QUICK N' NEAT" for "pie crust" or "GLANCE-A-DAY" for "calendars." 88 00:06:26,130 --> 00:06:30,680 Suggestive marks are registrable and are the next best thing to the hottest and strongest 89 00:06:30,680 --> 00:06:35,030 types of marks: "fanciful" marks and "arbitrary" marks. 90 00:06:35,030 --> 00:06:39,830 "Fanciful" and "arbitrary" marks are the easiest types of marks to protect because they are 91 00:06:39,830 --> 00:06:43,690 inherently distinctive and immediately function as source identifiers. 92 00:06:43,690 --> 00:06:49,169 They are typically creative or unusual, so it is less likely that other parties are using 93 00:06:49,169 --> 00:06:51,260 them for related goods and services. 94 00:06:51,260 --> 00:06:56,180 "Fanciful" marks are invented words with no dictionary or other known meaning. 95 00:06:56,180 --> 00:07:00,230 For example, "BELMICO" for "insurance services." 96 00:07:00,230 --> 00:07:05,889 "Arbitrary" marks are actual words with a known meaning, but words that have no association 97 00:07:05,889 --> 00:07:09,140 or relationship with the identified goods and services. 98 00:07:09,140 --> 00:07:13,340 For example, "BANANA" for "tires." 99 00:07:13,340 --> 00:07:18,100 Choosing a fanciful or arbitrary mark is a great way to help consumers identify the source 100 00:07:18,100 --> 00:07:22,610 of your goods and services and distinguish them from the goods and services of others. 101 00:07:22,610 --> 00:07:25,710 These kinds of marks are immediately protectable. 102 00:07:25,710 --> 00:07:30,340 Be aware, however, that warm and hot marks can cool over time. 103 00:07:30,340 --> 00:07:35,990 Without proper policing, a strong mark can become weak, even generic. 104 00:07:35,990 --> 00:07:42,199 The words "ESCALATOR," “ZIPPER,” and “YO-YO” were all once inherently strong trademarks. 105 00:07:42,199 --> 00:07:47,010 Because the trademark owners failed to police their marks or even misused them themselves, 106 00:07:47,010 --> 00:07:52,320 the marks lost their source indicating power and became generic in the United States. 107 00:07:52,320 --> 00:07:58,190 Once non-ESCALATOR brand moving staircases became known as "escalators," instead of "moving 108 00:07:58,190 --> 00:08:01,949 staircases," the "ESCALATOR" brand no longer had trademark meaning. 109 00:08:01,949 --> 00:08:05,180 It became the common everyday name of the goods themselves. 110 00:08:05,180 --> 00:08:10,070 So, make sure to select a mark with some heat and to keep the heat turned up on your mark 111 00:08:10,070 --> 00:08:11,770 once you start using it. 112 00:08:11,770 --> 00:08:16,340 That will help consumers recognize your mark as the source of your goods and services. 113 00:08:16,340 --> 00:08:21,860 We’ve now covered the two largest concepts to be aware of when selecting a mark: likelihood 114 00:08:21,860 --> 00:08:25,520 of confusion and strength of the mark. 115 00:08:25,520 --> 00:08:30,820 There are others factors to consider, however, and they may also prevent your mark from registering. 116 00:08:30,820 --> 00:08:35,740 Some of them include situations where the mark is a surname, geographically descriptive, 117 00:08:35,740 --> 00:08:40,620 deceptive, disparaging or offensive, a foreign term that translates into a descriptive or 118 00:08:40,620 --> 00:08:46,070 generic term, an individual's name or likeness that is being registered without proper consent, 119 00:08:46,070 --> 00:08:51,490 a title of a single book or movie, and matter that is purely decorative or ornamental. 120 00:08:51,490 --> 00:08:55,550 Although we are not going to cover those topics here, you should be aware of them, as they 121 00:08:55,550 --> 00:08:58,170 are potential bars to registration. 122 00:08:58,170 --> 00:09:03,110 For more information, consider hiring a trademark attorney for advice and consult the Trademark 123 00:09:03,110 --> 00:09:06,020 Manual of Examining Procedure, called the TMEP. 124 00:09:06,020 --> 00:09:12,990 The TMEP is located on the USPTO.GOV website and discusses the registration process from 125 00:09:12,990 --> 00:09:14,320 beginning to end. 126 00:09:14,320 --> 00:09:18,920 The chapter explaining the various refusals that a USPTO examining attorney may issue 127 00:09:18,920 --> 00:09:21,200 is Chapter 1200. 128 00:09:21,200 --> 00:09:26,150 In addition to selecting a mark that avoids USPTO refusals, you should also consider how 129 00:09:26,150 --> 00:09:28,700 the mark will function in the marketplace. 130 00:09:28,700 --> 00:09:32,130 Is it easy to pronounce, remember, or spell? 131 00:09:32,130 --> 00:09:35,380 Does it translate to something offensive in a foreign language? 132 00:09:35,380 --> 00:09:39,390 These are just some of the additional concepts to consider. 133 00:09:39,390 --> 00:09:40,680 That's a lot to think about. 134 00:09:40,680 --> 00:09:42,420 And it can seem daunting. 135 00:09:42,420 --> 00:09:46,200 If you feel overwhelmed, you might want to consider hiring a trademark attorney to advise 136 00:09:46,200 --> 00:09:47,200 you. 137 00:09:47,200 --> 00:09:50,830 It isn't required, but an attorney skilled in trademark law can help you think through 138 00:09:50,830 --> 00:09:52,890 all of the complex issues. 139 00:09:52,890 --> 00:09:57,230 For more information about hiring an attorney to help, be sure to consult the "Basic Facts 140 00:09:57,230 --> 00:10:01,991 About Trademarks" booklet and watch the "Basic Facts Breakdown" video called "How Do I Get 141 00:10:01,991 --> 00:10:03,980 Help With My Application." 142 00:10:03,980 --> 00:10:09,350 Both are available in the Trademarks section of the USPTO.GOV website. 143 00:10:09,350 --> 00:10:13,690 Keep in mind that selecting a mark is one of the most important aspects of building 144 00:10:13,690 --> 00:10:15,680 a brand for your business. 145 00:10:15,680 --> 00:10:19,810 It's the most visible outpost of your company and it represents all the goodwill created 146 00:10:19,810 --> 00:10:22,300 by your long hours and hard work. 147 00:10:22,300 --> 00:10:26,770 It lets consumers know that when they see your mark, they're buying a quality product 148 00:10:26,770 --> 00:10:28,860 or hiring a dependable service. 149 00:10:28,860 --> 00:10:33,300 Thanks for watching this Basic Facts Breakdown and we hope you learned how a properly selected 150 00:10:33,300 --> 00:10:37,850 trademark will help you register the mark with the USPTO and help you enforce it in 151 00:10:37,850 --> 00:10:38,850 the marketplace. 152 00:10:38,850 --> 00:10:40,360 See you next time. 153 00:10:40,360 --> 00:10:42,820 I'm Mark Trademan, Trademark Information Network.