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SELECTION OF THE RIGHT TRADEMARK
The choice of a mark to represent a business commercially and also to distinguish a product or service from another is crucial not only from a marketing and sales point of view but also for the registrability value of the mark. If a trademark application filed by an applicant with the U.S. PTO does not meet the criteria of registrability, the application will be rejected and the mark will be refused registration. Therefore, several factors must be considered when choosing the trademark. One must not only study whether the mark is identifiable and distinguishable for the product or service but also whether the chosen mark is suitable for registration with the U.S. PTO.
CRITERIA FOR CHOOSING THE RIGHT MARK
The first and foremost criteria for selection of a mark is that the chosen mark is distinct and not generic.
Perhaps the most important requirement for the registrability of a trademark is that the mark be distinct and not generic. The epitome of distinctiveness is a mark unrelated to the goods or services. A mark is inherently distinct and therefore registerable if a consumer of the goods or service associated with the mark has never encountered the mark before. A classic example of distinctiveness is the mark “Apple Computer” for computers.
Continuum of Distinctiveness: To understand the theoretical underpinning of allowance of a trademark application, one has to understand what the courts refer to as the continuum or spectrum of distinctiveness of a mark. The spectrum of distinctiveness of a mark ranges from a fanciful mark at one end of the spectrum to a descriptive mark at the other end of the spectrum. Levels of distinctiveness of a mark on the continuum is listed below:
  • Fanciful mark: A fanciful mark is a coined word not found in a dictionary and which has no meaning. A fanciful mark is inherently distinctive and prima facie registerable. An example of a fanciful mark is Exxon, Kodak, etc.  The downside of using a fanciful mark is that the registrant generally needs to spend significant funds to associate the fanciful mark with the product in the minds of the consumer.
  • Arbitrary mark: An arbitrary mark is a less distinctive mark than a fanciful mark but is also prima facie registerable. An arbitrary mark is a common word found in a dictionary and used in a context unrelated to the product. An example of an arbitrary mark is “apple” in “Apple Computers” as the word "apple" has no nexus with a computer.
  • Suggestive mark: A suggestive mark is less distinctive than an arbitrary mark, but like fanciful and arbitrary marks, is presumed to be prima facie trademark registerable. A suggestive mark suggests the nature or characteristic of a product but requires imagination on the part of the consumer to associate the mark with the product. An example is the mark “Coppertone” for a sun tan lotion, “Jiffy Printing” for a printing service, etc.
  • Descriptive mark: A descriptive mark is the least distinctive mark on the continuum of distinctiveness. A descriptive mark is a word with a dictionary meaning that describes the goods or services. An example is EverReady Battery, Krispy Cake, etc. A descriptive mark will be refused registration on the principal register on the grounds that the mark is “merely descriptive of the goods or services” unless the applicant can show that the mark has acquired secondary meaning through extensive marketing of the goods or services in the marketplace and have become known as representing the goods or services. If the descriptive mark is refused registration, the applicant can transfer the mark to the Supplemental Register for a period of about 5 years, market the product extensively in the marketplace till the mark acquires “secondary meaning”, and then re-transfer the descriptive mark back to the Principal Register. However, the date of filing will become the date of the transfer. In any case, registration on the supplemental register will prevent anyone else from trying to register a similar mark at the USPTO so the owner will be protected.

A generic mark is the common name for a product or services, for example "sugar" when used in connection with sugar. A generic mark cannot be used as a trademark, i.e.,, used to identify the source or origin of goods or services and to distinguish the products or services of a business from the products or services of other businesses, and therefore a generic mark is never trademark registerable. Allowing a trademark to issue for a generic word would preclude the use of that word by the general public and create a monopoly for the use of a common name. Marks that have become generic after losing their distinctive character are known as genericized trademarks.

Sometimes, as noted earlier, a registered trademark if used improperly may become generic over time. Examples of such terms are Xerox, Cellophane, etc. As recently as March 2009, Intel and Dell filed petitions with the United States Patent and Trademark Office (U.S. PTO) to cancel Psion’s trademark ‘NETBOOK’ on the ground of it being generic. Intel stated: “The consuming public has already adopted 'netbook' as a generic term for a category of notebook computers that are small, inexpensive and contain less processing power, making them optimal for connecting to the internet”. The outcome remains to be seen.

The second step is to ensure that the chosen mark is not confusingly similar to another trademark.
15 U.S.C. §1052 states: “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it ... (d) Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive....
One way to check for the availability of the chosen mark is to conduct a trademark search on the Principal Register of the U.S. PTO and a common law search. Please read Chapter III regarding instructions for conducting a trademark search. If a more thorough search is required, one may contact a trademark attorney to conduct a comprehensive trademark search.
In the case of re E. I. du Pont de Nemours & Co ., the Court of Customs and Patent Appeals opined in an ex parte examination that “the issue of likelihood of confusion typically revolves around the similarity or dissimilarity of the marks and the relatedness of the goods or services.
In the case of Re MBNA America Bank, N.A. , the Federal Circuit Court of Appeals explained that:
The next step is to determine whether the chosen mark is descriptive of the goods or services.
A mark may be refused registration if it is descriptive of the goods or services of the applicant, or deceptively mis-descriptive. For example, the mark “Computer Gadgets” would be rejected by the U.S. PTO if the product of the applicant was in fact the manufacturing and selling of computer equipment and gadgets.
The U.S. PTO rules provide: “the examining attorney will refuse registration of a mark as merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services” and “a mark will be refused as deceptively misdescriptive if (1) the mark misdescribes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services; and (2) the misrepresentation conveyed by the mark is plausible.
In the case of Re MBNA America Bank, N.A. , the Federal Circuit Court of Appeals explained that:
“A mark is merely descriptive if it immediately conveys information concerning a quality or characteristic of the product or service. The perception of the relevant purchasing public sets the standard for determining descriptiveness. Thus, a mark is merely descriptive if the ultimate consumer immediately associates it with a quality or characteristic of the product or service. On the other hand, "if a mark requires imagination, thought, and perception to arrive at the qualities or characteristics of the goods [or services], then the mark is suggestive." The most inherently distinctive marks are arbitrary; they do not even suggest any of the qualities or characteristics of the goods or services.”

A mark will also be rejected if it is geographically descriptive or deceptively geographically misdescriptive of the applicant’s goods or services. For example, the mark “Lone Star” will probably be considered geographically descriptive of the Lone Star state of Texas. If the applicant of such mark has his business located in Texas, such mark is likely to be refused by the U.S. PTO on the ground of being geographically descriptive.

On the other hand, marks that are merely suggestive of the product and not descriptive may be allowed. A mark would be considered suggestive if one party understands something completely different from that of another party. However, the line between descriptive and suggestive marks is subjective. For example, the mark “Forum” for training and business seminars was considered as “suggestive” in the lower court but “descriptive” in the higher court.
It is also important to ensure that the chosen mark is not similar to existing national emblems, symbols, etc., that have national or international significance
When choosing a trademark, one must ensure that the mark does not consist of certain words, names, symbols, terms, initials, marks, emblems, seals, insignia, badges, decorations, medals and characters adopted by the United States government or particular national and international organizations. 15 U.S.C. §1052 provides that a trademark may be refused if the mark:
"consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant.”
Also, certain statutes created by Congress grant exclusive rights to organizations and federally created private corporations. Violation of some of these statutes may be a criminal offense, for example, (regarding badges, medals, emblems or other insignia of veterans’ organizations) ; 706 (“Red Cross,” “Geneva Cross,” and emblem of Greek red cross), etc.
The chosen mark must not be merely ornamental or decorative in nature
A mark that is merely ornamental or decorative and does not identify or distinguish the applicant’s goods will be refused registration by the U.S. PTO. For example, common expressions and symbols such as, the peace symbol, "smiley face," or the phrase "Have a Nice Day", etc. are normally not registerable as trademarks.
Subject matter that is merely a decorative feature does not identify and distinguish the applicant's goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans or other trade dress
The chosen mark must not be scandalous, immoral, or deceptive to the consumer.
Any mark that consists or comprises of scandalous or immoral matter or is deceptive in nature, cannot be used as a trademark under 15 U.S.C. 1052(a).
"A mark that consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute; or a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 2(9) of the Uruguay Round Agreements Act) enters into force with respect to the United States."
For example, the marks “BULLSHIT” , ‘DYKES ON BIKES and COCAINE (for energy drinks) were considered scandalous and immoral. Deceptive marks are those marks that are misleading to the public. For example, the mark SWISS MIS for making chocolate will be deceptive if the goods do not originate from Switzerland.
The chosen mark must not be merely a trade name.
15 U.S.C. 1127, states: “The terms trade name and commercial name mean any name used by a person to identify his or her business or vocation.” Simply put, a trade name identifies one’s business and a trademark identifies one’s product or service. A trade name that is not used as a trademark, i.e., is not used to identify the source or origin of goods or services is not permitted to be registered as a trademark with the U.S. PTO. The reason is that trademarks are expected to meet a high standard of originality and creativity which are not provided by trade names. However, in some cases where the trade names identify the goods or services of the company, the trademarks may be registerable, for example: Coca Cola®.
The U.S. PTO also does not permit surnames of persons to be registered as trademarks as it would preclude other persons with the same name from using their name in their business.
Use more than one word for the mark.
When a mark appears, for example, to be merely descriptive of the goods or services, the mark may be made registerable by adding another word to the mark and disclaiming the descriptive mark. For example, the phrase “Voice Short Message Service” would probably not be registerable for a service that provides voice SMS services. However, the mark may be made registerable by prefixing the “Voice Short Message Service” with the name of the company (Kirusa, Inc.) that provides the SMS service. This may be done by including a statement in the trademark application such as: “No claim is made to the exclusive right to use ‘Voice Short Message Service’ apart from the mark Kirusa Voice Short Message Service as shown.
Checklist:
Before filing a trademark application, check the following:
1.
Have you obtained a registrability opinion from an attorney for the mark sought to be registered
Yes
No
2.
Is the mark generic – a common name/word used in everyday life?
Yes
No
3.
Is your mark the same, similar, or confusingly similar to a registered mark?
Yes
No
4.
Is your mark descriptive of your product or service?
Yes
No
5.
Is your mark the same or similar to existing national emblems, symbols, etc. that have national or international significance?
Yes
No
6.
Is your mark scandalous, immoral, or deceptive or signify any scandalous, immoral, or deceptive meaning?
Yes
No
7.
Is your mark merely ornamental or decorative in nature?
Yes
No
8.
Is your mark merely a trade name or surname?
Yes
No
If you answered No to questions 2-8, your mark is probably registerable as trademark with the U.S. PTO.
 
 
 
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