Five Reasons Trademark Law Can Be Confusing

Oftentimes my clients express confusion as to what exactly a trademark does or does not do for them in business.  As defined by statute, a trademark includes any word, name, symbol, or device, or any combination thereof (1) used by a person, or (2) which a person has a bona fide intention to use in commerce….to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods….  A service mark would apply similarly to one’s services.  The following five examples from my practice may illustrate some of the pitfalls when it comes branding your goods and services through federal trademark registration.

1. Trademarks likely to be confusing will be refused registration by the United States Patent & Trademark Office “USPTO.”  Clients may have the domain name, searched the USPTO database to find no other users of that name and still not be able to register the name as a trademark.  This is particularly true with coined word or multi-word marks.  It may also be true in instances where the sound of the mark may be confusing or where there is a foreign equivalent that may cause confusion.

2. Trademarks are not synonymous with domain name URLs.  While a domain name can also be a trademark, mere ownership of the domain does not necessarily protect your goods or services from competing brands that are likely to be confusing.  Unless Cybersquatting law applies, owning a .com domain name in itself does not prevent other domain registrations.  The best protection against infringing brands is federal trademark registration as such provides remedies including possible injunction, damages and attorney fees.

3. Trademark ownership is not the same as “owning the word, name, symbol, or device, or any combination thereof.”  Apple, a multibillion dollar computer technology company, does not own the word Apple.  How could it?  People were eating apples long before Steve Jobs came along.  However, what Apple does own is the right to use Apple exclusively for its branded products.  On the spectrum of distinctiveness, Apple for a computer company is arbitrary and therefore highly distinctive.   Apple has registered trademarks in various industry classes for this brand protection.

4. Trademarks must either be used in interstate commerce or one must have the bona fide intent to use the marks in interstate commerce.  One with a bona fide intent may file an Intent to Use “ITU” application.  Unless an extension is granted, the statement of use in commerce is required to be filed within 6 months of the application.  Merely having an idea or desire for a business, product or service down the road is not enough.  Warehousing of names, or in other words trademark squatting, is not permitted.  Unless there is a good faith intent, an application should not be filed.

5. Trademarks are exactly that, a trademark.  This sounds simple enough, but it often surprises clients that they must use the mark exactly as set forth in their application.  Varying the spelling or shaping of a word mark to fit a logo in the statement of use specimen filed subsequently to the trademark ITU application may not be acceptable to the USPTO trademark examiner.  In this case, a logo trademark application will also need to be filed.

Of course there are other situations when trademark law can be confusing to both clients and their attorneys.  For those, I welcome my readers to provide instances in Comment to this post.  Your thoughts and ideas are always welcome.

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