The hidden complexity of trademarks

Trademarks help protect providers of products and services from unfair competition. For example, assume the company “A” sells a product or service under a first brand. Business competitor company “B” is free to sell a competing product or service under a completely different brand. But if company B uses a brand calculated to confuse the company “A” customers into accidentally buying from company “B,” this is unfair competition. 

Four general rules:

There are four essential principles of trademark law. These are 1) “avoid confusion with existing marks”; 2) “don’t try to claim the normal marks (names) of a product or service”; 3) “a trademark only has meaning in the context of a particular class of product or service”; and 4) “use it or lose it.”

Try to be either distinctive or suggestive:

The USPTO will reject marks that too closely resemble the common name or logo of a product or service as being “generic.” But trademarks or names that are “fanciful,” — that have no obvious correlation to a product or service will often be accepted and registered. “Suggestive” marks are also allowed. But if you describe the product or service too closely, watch out. The USPTO examiner may deem these marks to be “descriptive.” To get a descriptive mark allowed, you have to agree to first register it on the USPTO “secondary register” for five years.  During this time, it is difficult to enforce the mark. But, after five years of use in trade, absent objection by outsiders, you can then file to upgrade your “seasoned” descriptive mark to full trademark status on the “primary register.”  

Commercial context:

Note that the word “Trademark” contains “trade.” But trade in what? Under both US and international law, trademark offices try to cram all products and services into a limited number of different classes. Recycling the same names within a class is generally not tolerated. However, you can often reuse the same names for other products or services in other classes. The USPTO usually examines the submissions on a per-class basis. But they occasionally do cross-check between classes if they think the possibility of confusion is high. 

You have a limited time to prove commercial use:

The USPTO grants trademarks on a “use it or lose it” basis. It is possible to reserve some names for up to a few years on an “intent to use” filing. But ultimately, to get the trademark, you need to provide proof that you are using the mark in commerce by submitting a “specimen.” This specimen is often a photograph of sales receipts, website purchase pages, and the like. They require photos under the theory that pictures provide better proof that you are using the trademark name in real trade. These days, the USPTO examiners will also flag specimens that they think are too manipulated. 

Other tricky areas:

There are many other complexities of trademark law as well. Searches can be tricky because the underlying legal standard for trademark infringement is “the possibility of confusion.” Don’t be confused and think that the criteria are “the same spelling.” It is not, and trying to use an alternate spelling of a previously registered mark can get you in trouble.

Unregistered common law trademarks are another potential problem.  Further, a trademark must only function as a source indicator. It can’t otherwise impact the utility of the product. 

Thus merely avoiding other registered trademarks with identical spelling is often not enough. Alternative spellings, word prefixes, word suffixes, different name variations, and common-law use can often cause problems if potential customers might be confused.