Trademark Filing Change

The US Patent & Trademark Office announced that it will delay the effective date of its mandatory electronic filing rule change from December 21, 2019 to February 15, 2020.

Under this change, trademark applicants and registrants will be required to file their trademark applications and documents concerning trademark applications and registrations online using the USPTO’s Trademark Electronic Application System (TEAS). 

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What does “merely descriptive” mean?

A trademark or service mark is stronger and easier to protect if it is inherently distinctive, such as KODAK or XEROX.

However, most marketing folks gravitate toward more descriptive marks that are not inherently distinctive and, therefore, more difficult to register and protect. Some are “merely descriptive” and can’t serve as a trademark.

PURE APPLE for applesauce made from 100% apples would be merely descriptive of the product and could not serve as a trademark.

Oftentimes, the issue in a federal application for registration of a mark is not as black and white.

What happens when the trademark office refuses an application for descriptiveness? There are several options.

First, the mark may be abandoned and a more distinctive mark selected.

Second, evidence may be presented that the mark is suggestive but not merely descriptive. For example, the mark as a whole may have other connotations in customers’ minds than merely describing some aspect of the product or service.

Third, the Applicant may elect to publish the mark on the supplemental register, which sacrifices some of the benefits of a federal regisration:

  • no nationwide constructive notice of the registrant’s ownership;
  • no priority of use nationwide of the registered mark effective from the filing date of the federal application; and
  • no evidentiary presumptions in Federal Courts.

However, the supplemental registration is not an admission of descriptiveness, and Applicant may elect to apply for registration on the principal register with proof of distinctiveness (ordinarily relying on a presumption after five years of continuous use).

Fourth, if the mark has already been used and acquired distinctiveness, then evidence of acquired distinctiveness may be provided to overcome the refusal.

Fifth, Applicant may appeal the refusal to the Trademark Trial and Appeal Board, which is the most expensive and time consuming option. (It’s often not successful, either.)

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Should I trademark my upcoming business name?


Your business name is the legal name of your business. This is not your brand.

While your brand might be the same or similar to your business name, it doesn’t have to be.

I’ve seen people trademark business names with the “inc.” and all, and this is just so wrong.

Your trademarks protect a brand that you attach to goods (or a service mark used in providing services), and the trademark identifies your business as the source of those goods.

A registered trademark protects your brand by preventing others from using confusingly similar trademarks.

I caution entrepreneurs to establish their company and to register it with their secretary of state before filing for a trademark registration.

Then, the company, a separate legal entity, can file for and own its trademark (not the individual entrepreneur).

If you have a bona fide intent to use a trademark or service mark, you may file an application to register the trademark or service mark after you have formed your company or corporation that will own the trademark or service mark.

Also, I caution entrepreneurs to conduct due diligence on their marks. Check to see what your competitors are doing. Make sure that your marks are distinctive (i.e. different than anybody else’s marks) before using or registering the marks.

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Am I allowed to refer to a trademarked product when selling another product?

Yes, but be careful.

Having the right does not mean that you won’t be sued in America.

This particular right is described in the Lanham Act as a type of fair use.

The factors for “nominative” fair use are as follows.

  • a product or service must not be readily identifiable without use of the mark,
  • The user only uses so much of the mark as is necessary.
  • The user does not do anything to imply sponsorship or endorsement

In fact, it would be useful to provide a prominent disclaimer such as:

“All trademarks both marked and unmarked belong to their respective companies, and use of a trademark nominatively to refer to a particular product or service does not imply sponsorship or endorsement.”

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