Giselle Ayala, Esq.

Creativity Law Attorney

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What is a Trademark?

A trademark is a sign or symbol capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights. Trademarks can be nominative (words), mix (words and logos), figurative (logos), sound trademarks, audiovisual (video), and tridimensional (also known as trade dress).

What Is the Best Trademark?

A trademark is the “best” when it reflects the message and purpose of the owner, whether it is an individual, a business, or an organization. Additionally, when it comes to word trademarks, the best are made or invented words because they are the most unique.

The higher level of distinctiveness of a trademark, the better. There are four levels of distinctiveness when it comes to word trademarks: generic (nor protectable), descriptive (might be protectable to some level), suggestive, fanciful, and arbitrary. The best strategy to register an effective trademark is to conduct a clearance search and understand the process of selecting the right one.

The analysis of the mark the client wants

The attorney and the client’s first step is to have an open conversation about the trademark that the client wants. For purposes of this meeting, it can be essential that a member of the client’s marketing team is present. The attorney wants to understand what the client wants in terms of the trademark in the short and long term, what the mark looks like, and how the client and the team use the trademark in commerce. This meeting is one the most important because it allows the attorney to determine: whether the client can register the mark, whether the client needs to modify the mark, if the client needs to make adjustments in terms of the use of the trademark in commerce, or if the client needs to come up with a new trademark.

The number of marks to be registered

After meeting with the client, the attorney understands the client’s trademark and can explain whether the client’s goals require one or more applications. The client may want to protect several elements of the trademark. For this purpose, the client can register the trademark as a word trademark without protecting any specific visual elements. Suppose the client also wants to protect specific visual or artistic components of the trademark. In that case, it is necessary to file two different registrations, one for the words of the trademark alone and one for the trademark with a visual design.

Additionally, some clients sell products using specific packaging or presentation. These features of a product can be classified as trade dress if they comply with specific requirements. Trade dress is another form of a trademark, and it can be registered too. Trade dress is, generally speaking, the total image and overall appearance of a product or service. It may include features such as size, shape, color or color combinations, texture, graphics, sounds, scents, and flavors, motion and moving images, particular business techniques, and the look and feel of a website.

The classes of goods or services for mark

Another critical aspect of the attorney’s services is understanding the client’s business and what the trademark is doing for it. The client may have a business that provides several goods and services; this does not necessarily mean that the mark can be registered to identify all of them. To register a trademark, the USPTO requires that the applicant make a specific description of the type of goods or services distinguished by the trademark and submit proof of such use. That evidence is called a “specimen” of use in commerce.

Considering all this, the attorney must review how the client is selling or promoting its goods or services and what marketing or advertising materials are using. Some clients are unique entrepreneurs that attract customers by talking indirectly about what they sell. An example of this is Starbucks, which is known to promote itself by “selling you an experience,” not a coffee. In terms of marketing, this strategy probably works. However, in terms of trademark law, an applicant must directly show to the USPTO examiner the goods or services promoted by the trademark. In terms of the USPTO, the applicant must show a “direct association between the mark and the goods or services.“.

In sum, with the attorney’s help, the client can assign a proper classification of goods or services to the trademark and submit the proper evidence to show the use of the trademark in commerce.

The registrability of the trademark and the assessment of risk

Finally, the attorney’s most crucial task is to build a Trademark Clearance Report covering the analysis explained above and assess possible problems with the registrations if the client and the attorney don’t make corrections. The report explains to the client the following:

– The type of trademark that will be registered.- Whether there are prior similar trademark registrations or applications.- Whether there are any conflicts.- Whether there are any factors that the examining attorney can use to deny registration or request additional evidence.

It is also worth noting that in contrast with the research that a non-attorney can perform, a U.S. trademark attorney will conduct comprehensive research in order to determine the existence of grounds for denial, including the existence of common law trademarks, the existence of business names similar to the trademark, the existence of marks registered in states where the client wants to do business, the existence of other legal issues like a constitutional bar to registration or right of publicity issues.

The report built by the attorney is crucial because it is the basis of the client’s final decision to proceed with the trademark as it is or to change the trademark. Additionally, if, despite diligent work performed by the attorney, the USPTO Examining Attorney objects to the registration, the report serves as a basis and a guide to defending the client’s trademark application.

Trademarks’ similarity in the context of registration

When an applicant applies to register a trademark, the USPTO examining attorney researches to establish if there are other similar trademarks already registered. If there are trademarks using similar words, logos, or features, this is not a problem if each trademark is used to distinguish different and unrelated goods or services. In other words, if IVON and IVONN are registered but one is used to mark financial consulting services, and the other is register to promote organic goods, this is unlikely to be a problem. Considering this, before an application for registration is filed, attorneys conduct a clearance search, which allows them to advise clients regarding the viability of a trademark or the existence of risk factors. Our New York trademark attorneys at G.A.M. Law Offices can help you address any questions or concerns regarding the similarity of trademarks in New York, NYC, and beyond.

The specific case of famous trademarks

Even though similar trademarks in different industries can co-exist, when a trademark is very popular among consumers or when it has achieved recognition in more than one market, that trademark can be categorized as a famous trademark can prevent the registration of similar trademarks, even if they are used in a different industry, this applies to trademarks in New York as well. For example, even though the Nike logo is used especially to promote sports clothing and sports footwear, it is unlikely that Nike will stand by while another tries to register a similar trademark in the health industry or for purposes of financial coaching services. Nike has gained such a level of recognition that it is unlikely that trademarks similar to Nike’s logo are registered.

What could happen if similar trademarks are filed for registrations?

If two or more similar trademarks are filed for registration before the USPTO, the examining attorney will probably issue an Office Action requesting the applicants to offer evidence that proves there is no likelihood of confusion; that is, evidence that proves that a potential purchaser would be able to distinguish between the applicant’s goods or services.

Trademarks’ similarity in the context of litigation

Trademarks’ similarity issues arise in the context of litigation when a trademark owner files a complaint against another alleging trademark infringement, counterfeiting, unfair competition, and trademark dilution. In this case, the owner of a trademark states that another is using its trademark without authorization, that the coexistence of the two marks is likely to cause confusion, and/or that the defendant’s goods or services are being promoted as if the trademark owner offered them.

Trademark Infringement

Section 32 of the Lanham Act, 15 U.S.C. § 1114(1), governs trademark infringement claims. To file a claim according to this section, the trademark of the plaintiff must be registered. The basic elements of this cause of action are that:

– Plaintiff owns a valid and legally protectable trademark.- Defendant used that mark or a similar mark without consent.- Defendant’s use of the mark at issue has caused a likelihood of confusion.

Trademark Dilution

Trademark dilution is a cause of action raised by the owners of a famous trademark. The rationale behind trademark dilution is that an unauthorized third-party using a famous trademark is likely to reduce the public’s perception that the famous mark signifies something unique, singular, or particular. There are two types of dilution: dilution by blurring and dilution by tarnishment.

– Dilution by blurring occurs when a famous mark’s distinctiveness is slowly whittled away by a similar mark used in connection with different goods or services.- Dilution by tarnishment occurs when a famous mark is linked to shoddy quality products or is portrayed in an unsavory context, thus harming its reputation.

– Plaintiff owns a valid and legally protectable trademark.- Defendant used that mark or a similar mark without consent.- Defendant’s use of the mark at issue has caused a likelihood of confusion.

Counterfeiting

Counterfeiting takes place when a third-party try to imitate another’ mark, with the intent to steal, destroy, or replace the recognition of the original, or to deceive consumers.