Tag: choose a trademark

  • Promotional Phrases as Trademark

    Promotional Phrases as Trademark

    Nowadays, in addition to “maker” and “brand”, “product name” is increasingly used as a trademark. There are simply so many product types and variations. Take a look at an example below:

    GREEN CLEAN is a product name of a cleanser from Farmacy Beauty. My impress is that it is something that naturally cleans your skin. It feels natural because of the word GREEN, and I can assume it is a cleansing product because of the word CLEAN.

    Well, this type of phrases well serve the purpose of explaining what the product is in addition to telling it apart from competitors’. However, because of the former, there’s limited protection.

    Descriptive phrases

    When your product name simply describes what it is, this cannot be registered on Principal Register but instead you may place it on Supplemental Register, which kind of serves as a waiting list to be registered on Principal Register.

    GREEN CLEAN is no different as belows.

    Why people or companies bother to register their marks on Supplemental Register? It still is a register, and it affords you the right to put ® symbol next to your product name. Other than that, it's a great stepping stone to later register on Principal Register.

    Tough luck if…

    You may be denied of registration altogether on both principal and supplemental register if your description is deceptive. For example, if you want to use the surname Obama for your book club, the USPTO would certainly refuse to register a name such as OBAMA BOOK CLUB.

    When the description might deceive consumers or defraud them, it simply is not a trademarkable name.

    In reality, though, you will face more issues with characteristics and features of your product or service. For example, let’s say you name your clothing brand SILK THE EXTRA ORDINARY. Then, the USPTO might want to confirm if your clothing is actually made of silk.

    Not a ban

    You can definitely use SILK for your soy milk product.

    Using a descriptive word in a non-descriptive way is actually a great way to create something distinctive without much creativity.

    Of course there are other ways. For example, SILKY may convey a similar meaning while avoiding deception. EXTRA ORDINARILY SILKY may not trigger the same rejection as SILK THE EXTRA ORDINARY though it’s very similar.

    Another example is COPY CALF for artificial leather goods. Although it is not made of CALF, the addition of COPY made it not deceptive.

    It was an obvious play on the expression “copy cat” and suggested to purchasers that the goods were imitations of items made of calf skin.

    A. F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ 459 (TTAB 1962).

    Last words

    As always, trademark law looks at the perception of consumers, and therefore it’s very subjective. So, you can simply look at a wording to figure out if it’s a good trademark. You should take account of the market/industry, target consumers, and product features together with the wording itself.

  • Standard Character mark v. Special Form mark

    Standard Character mark v. Special Form mark

    There are mainly two types of trademark, a standard one and a stylized one.

    Coca-cola_stylized_logo

    A standard one (called a standard character mark) establishes your trademark rights to the written words of the mark whereas a stylized one (called a stylized/design mark) to the expression of the words in a certain way.

    For example, “Coca-Cola” is a brand name of a certain soda drink, registered to the Coca-Cola Company. But you more often see the name in a particular style as shown here.

    Nowadays, the use of stylized logos and designs is very common because it effectively sets apart the company/brand from competitors’.

    A common choice is Standard Character.

    Although virtually all companies use at least some design/style elements in their trademark, still most of the companies register their trademark in a standard character format. Why?

    1. They don’t want their trademark right to be limited to a specific design. In fact, if you registered your brand name in a standard character format, any style/design of that registered name can’t be used by your competitors.
    2. Also, once registered as a stylized/design mark you can’t change the design or style of the mark. Companies often update their design and style elements to modernize them.

    Thus, it’s is a rule of thumb that a standard character format affords a better protection.

    A Styled/Design Mark works a bit differently.

    IPfever_logo_example
    JPfever_example

    Let’s say IPfever registered a stylized trademark: After a few years, a website devoted to teaching Japanese language and culture dubs itself Japanese Fever, “JP fever” in short, and starts using this logo:.

    Do you see any problem? Although they changed a letter, they look too similar. There’s likely an infringement case.

    However, if IPfever were registered as standard character, it would’ve been a different story. Because “fever” in Japanese Fever can be considered as a descriptive word for passion and enthusiasm for Japanese culture, it likely has a leeway.

    jpfever_example

    But it should be noted that stylized/design marks have their own limitation. If Japanese Fever  , I say this one differs in style so much to escape from a potential trademark infringement claim.

    You have to choose, but choose wisely.

    You might say you would just register both standard character and design marks. Problem solved? Well, it’s not that simple.

    You can’t claim “the coffee house” trademark for your coffee house because that’s what people call any coffee house. It’s reserved for everyone. But you may register this stylized/design mark.

    the_coffee_house

    You probably need to disclaim rights to the words, (meaning that others can literally use the same name) but it still protects you from something like this knock-off.

    the_coffee_shop

    So, figure out what’s the strength and weakness of your mark, and then choose wisely.

  • You’ve got to “use” your trademark

    You’ve got to “use” your trademark

    Let’s take a look at an interesting story:

    By the time Apple Inc. debuted iPhone in January 2007, the prefix “i” had already become a thing of Apple. The inauguration of iMac series dates back in 1998. In 2003, iPod was a mega hit.

    Lesser known than Apple, however, there was a startup called InfoGear Technology Corporation, which developed an internet phone technology, called “iPhone.”

    Yes, iPhone™ by InfoGear.

    specimen in InfoGear's trademark application
    specimen in InfoGear’s trademark application

    Of course, there’s nothing suspicious about Apple’s iMac; the iMac trademark was first registered in 1995 by Digi International Inc. which assigned the trademark to Apple in 1998. Here, Apple did a right thing; it bought the iMac trademark before announcing iMac.

    But, how about iPhone? Based on the USPTO’s record, InfoGear used the iPhone trademark from 1997, and it was registered in 1999. Apple filed its iPhone trademark application in January 8th, 2007. (Steve Jobs unveiled iPhone to the world the next day).

    Can Apple do that? Absolutely “NO” said Cisco who brought a lawsuit against Apple based on its iPhone trademark purchased along with InfoGear.

    In all fairness, if Cisco proved its seriousness about iPhone in the court, we might now have “iPod 4G LTE Advanced” instead of “iPhone 7.”

    Who knows what Steve Jobs said to Cisco, but Cisco somehow agreed to a concurrent use of the iPhone trademark. (Apple probably challenged Cisco’s iPhone trademark by saying that “i” prefix had been associated with Apple product even before Cisco’s registration.) Well, assuming Cisco had a valid and enforceable trademark right, what could’ve happened?

    Cisco would say the iPhones sold by InfoGear and Apple were both communication devices, and customers would likely be confused. Of course, Apple would say they are totally different devices; but Apple likely loses on this account.

    As a counter, Apple could’ve argued that Cisco stopped using the trademark (thereby lost its right). Then, the followings become relevant: How many iPhone Cisco sold? How many people bought, used, knew or seen iPhone by Cisco? Had Cisco advertised iPhone? My guess is that Cisco purchased the iPhone trademark, but it really didn’t think about using it much.

    So, be aware that to own a trademark, you have to actually use it, which means placing your goods/services (bearing that mark) in the market.

    Trademark registration provides security. For example, companies often file intent-to-use (“ITU”) applications before making and selling new products. Without the ITU, mobile phone companies won’t be able to announce a flagship model months earlier than actual release, nor can they push an advertising campaign for a new product before they make sales. (Announcing or even advertising is not enough to establish a use of trademark under the trademark law.)

    Trademark registration provides security. For example, companies often file intent-to-use (“ITU”) applications before making and selling new products. Without the ITU, mobile phone companies won’t be able to announce a flagship model months earlier than actual release, nor can they push an advertising campaign for a new product before they make sales. (Announcing or even advertising is not enough to establish a use of trademark under the trademark law.)

  • For DIY TM Applicants: What’s a Strong tradeMark?

    For DIY TM Applicants: What’s a Strong tradeMark?

    There is a “strong mark” and a “weak mark”. You don’t need to know all legal distinctions as to different types of marks, but you want to have a strong mark, right? Here’s a shortcut to get to the goal.

    For a starter, you don’t want to choose a mark that’s fairly similar to what’s already out there.

    If you are making a new internet search engine, don’t name it “Goggle” or “Yahou!”  Your common sense and conscience will tell you why. Similarly, don’t name your search engine “Stanford Internet Search.”

    A clearance search can be cheaply done by a Google search. Search the names you have in mind (or what you’re using already). Not only that, search goods or services that compete (or would compete) with yours. You definitely want to know what their names are.

    Avoid any confusion at all cost. You probably shouldn’t call any of your good/service “Coca-Cola.” Nor can you call your soft drink product “Soda.”

    Next, your mark should stand out.

    You can’t name your concierge service “Luxury Concierge Service.” Well, technically you can, it’s a free country. However, the law is reluctant to protect your trademark because other companies should be free to say their Concierge Service is Luxury.

    You need to be creative on this. “Kodak,” I think, is a superb trademark. It’s short but distinct, original but easy to pronounce. Don’t worry if you’re not good at making up words. A common word like “Apple” can be a good trademark for a computer electronics company.

    Internet-readiness

    In today’s world, an internet domain name is as important as a trademark.

    A domain name registration does not necessarily mean that the name is taken as a trademark by others. However, you probably want to avoid someone else owning YOUR_TRADEMARK.com.

    If the name in your mind is still available for a new registration, get it immediately. The domain registration costs less than $12 a year. (It’s as easy as setting up an email account.) If it’s owned by others, consider buying it from the current owner or finding a better name.

  • Marketing Starts From Naming

    Marketing Starts From Naming

    Many low-end products tend to say exactly what it is. On the other hand, high-end products are very subtle. Have you ever bought a crappy good carefully wrapped inside a sophisticated package? Well, more likely than not you weren’t careful.

    The thing is there is a tiny market for a fancy looking crappy product.

    In other words, having a fancy name does rarely fly for a low-end product. You should name your product for what it is. However, that doesn’t prevent you from growing a great brand name.

    In retail, packaging does not only protect the goods but also express about the goods.

    One important thing you learn from a package is the source of origin. Well, the source of origin goes far beyond just the country where it’s made. Literally anything to a certain extent including the names of a seller, a distributor, or a manufacturer can be marked on the package.

    Have you seen “Designed in California” marking on Apple products? That speaks for how consumers perceive the source of origin information.

    Consumers of today are not just looking for a pair of pants. They always shop for their favorite pair of pants.

    So, the source of origin is important.

    I didn’t say anything can be written. In fact, it has to be truthful to begin with.

    On the other hand, any trademark can be truthful as long as nobody else is using it. Well, that’s not entirely true because there are certain limitations to what can be a trademark. More to that later.

    Nowadays, retailers are increasingly selling products under their store brand names. This trend reflects the fact that manufacturing technology affected goods is mature.

    What does this tell you?

    People are looking for a name they can trust unless they expect to find an exciting feature or technological advance inside. You should go for a trust-worthy name, and you should stick to it.

    When you are using a unique name or phrase depicting your product, mark it with “TM” to give the public notice. You can always go for an Intend-To-Use trademark application although it’s only recommended case-by-case. When registered, you can put ® instead.

  • Choosing a Right Name for your Brand or Product

    Choosing a Right Name for your Brand or Product

    Zara, which is a Fast Fashion brand like Forever 21, boasts that it takes only 10 to 15 days for an initial product design to reach their retail stores through international manufacture and logistics. In this fast-paced environment where a product can be copied within a few days and mass produced, a superb product design and packaging warrants only half the success.

    Turning a customer satisfaction from a superb quality and brand into a repurchase requires marking of the product with a unique and legally protected name. Such name is called a trademark, and it includes not only brand names and product names but also logo images, patterns, phrases, colors, and so on.

    Then, how you decide what to use as a trademark? In this article, brand and product names are discussed.

    1. Try to Stand Out from Competition

    If your beauty supply store is named “ULTA” or “SEPHORA”, you are clearly in trouble. Likewise, you should avoid choosing a name that creates a confusion among consumers even if it is newly minted by you. “Rihanna’s Beauty” is a good example of such confusing tenor.

    To prevent this kind of trouble, you must conduct a market research beforehand. By far the most effective and economical way is using internet search engines. You can use Google, Naver, and so on to scheme through names and marks that are used in your relevant market.

    Avoid names that are similar to existing ones, and you should not use an identical one to other’s trademark at no circumstance.

    2. Avoid Generic Names

    Those words and phrases commonly used in your field of expertise lack the potential to be a good trademark.

    Words such as “3X”, “16-inch”, “Braid”, “Ghana”, and “Pageboy” are general terminologies referring a number of goods in a single package, hair length, product type, hairdo, and so on. These general terminologies must be preserved for a free use among all commercial actors, and the trademark law accordingly limits trademark rights in such cases. Hence, you should not use generic terms unless it is necessary.

    Oftentimes, using a general term is easy to memorize and facilitates a quick understanding of the characteristics of goods, but there are different ways to achieve the same.

    For example, iPad, a tablet computer from Apple, Inc., uses the word “pad” to depict a “tablet computer”. Despite being a common word referring to a book of thin sheets, a “pad” was not associated with a tablet computer at the time.

    This is how you should go when you are considering a common word for your trademark: distancing from its original meaning or using an untraditional spelling.

    A billionaire Tesla CEO Elon Musk established a construction company specialized in tunneling, the Boring Company, in which boring means digging a tunnel. At the same time, it could also mean a company that are not interesting, poking some fun.

    3. Unique Wording that Describes Your Product

    When it comes to a Samsung smartphone Galaxy Note, the word “note” denotes that this particular type of smartphone has a bigger screen and includes a stylus pen. Again, “note” was a terminology that mobile computer industry did not find a common use, so this could be a good choice.

    To explain further, let’s use an imaginary wig product, 100% Hand-tied Human Hair Pageboy Lace Wig as an example.

    • First of
      all, there are obvious characteristics of goods that a trademark
      needs not contain, such as the product type wig.
    • While 100%
      Hand-tied and Lace are important features of the product, the
      wording is a poor choice for a trademark. You can have a much
      stronger trademark by devising unique phrases such as Artisan’s
      Lacework, Tied-on-Lace, On-lace-handywork, and so on.
    • A fanciful
      name can be used instead of human hair. Keratin, a type of protein
      found in hair, is already familiar with consumers, and words like
      natural and organic can set a positive tone for your product.
    • Pageboy is a
      style that could be more efficiently and accurately illustrated by a
      drawing or photo. However, you may develop variety of unique
      wordings that sets your brand apart from the pack, such as Pagegirl
      instead of Pageboy and Peige instead of Page. Note, Peige may signal
      a specific color Beige.

    While product names can tell what kind of product a good is, they should serve as a source identifier. In other words, consumers should be able to learn from which manufacturer, distributor, or seller a certain good is originated.

    Ideally, a good trademark should tell a consumer that the product in her consideration is this “Artisan’s Lacework – Peige” among many other Pageboy style 100% human hair hand-tied lace wigs.

    4. Tips

    • Be creative
      when naming a product. “Kodak” is a word created by its
      founder to serve as a trademark. Unique and easy to memorize.

    • A common
      word has a potential to be a great trademark. Office electronics
      company “Brother” transformed a common word into a great
      and distinctive trademark.
    • You may
      consider a terminology uncommon in the technical field or a spelling
      variation. Lyft, a Uber service competitor, uses a misspelled common
      word “lift” which means giving a ride.

    Words or phrases including ARTISAN’S LACEWORK, TIED-ON-LACE, ON-LACE-HANDYWORK, KERATIN, NATURAL, ORGANIC, PAGEGIRL, and PEIGE, appearing in this article, were created to explain relevant legal concepts and may be inappropriate for use as a trademark. All content and information in this article does not constitute a legal counsel or advice at any circumstance.

  • Tax forms are complex and lengthy, but they can’t go south.

    Tax forms are complex and lengthy, but they can’t go south.

    Federal trademark registration has become a standard practice for many reasons including (1) it’s inexpensive (as low as $225 to apply online); (2) due to the internet, no one does business in a single state; and (3) branding becomes crucial to even small businesses. And if I add one more to the list, it’s fairly easy.

    The easiness comes with a risk.

    For example, federal tax forms are usually very complex and lengthy; they are designed to make you write down all taxable incomes imaginable, even those you would never know they were considered income. A trademark application, on the other hand, is very simple and straightforward. In other words, it’s easy to fill out the forms but hard to do it right.

    So there’s $99 (plus application fees) trademark registration services online.

    Unfortunately, not many people see this as a problem. These services simply let you search registered trademarks online, to apply trademark online, and remind you of important dates for maintaining registration. Well, it sounds like a lot, but the United States Patent and Trademark Office (“USPTO”) offers Trademark Electronic Search, Trademark Electronic Application, and even email reminders of important dates, for free of charge.

    There is a reason for such a low price.

    Online registration services do provide convenient tools and ease the pain of yours, but they come with a price (literally and also in the form of a false sense of security).