Simple Trademark Rules and Considerations

At the Law Offices of Nikki Siesel PLLC, the attorneys like to provide their clientele with clear simple rules to guide their business practices. It is important that all employees of the company know the basic rules of trademark usage and each business may have their own specific guidelines to ensure consistency. In fact, consistent use of a mark will facilitate and strengthen your rights in a trademark. Proper branding guidelines should be shared with all the employees and perhaps circulated in a manual for easy reference and use. The following are some basic considerations when launching a brand.

Avoid using terms in the trademark that are widely used in your industry. You may either have to make a disclaimer that you have no rights to the word apart from the Mark as shown or you will be afforded a narrow scope of protection. In addition, it will be extremely difficult to police these types of Marks. Many entrepreneurs are under the misconception that Marks describing the characteristics, qualities, or purpose of a product or service are strong Marks. This is not true. In fact, descriptive Marks are weak Marks that the USPTO will refuse to register unless they have developed secondary meaning (this occurs when the consumer learns to associate the Mark with a single source). It usually takes several years to develop secondary meaning.

Avoid selecting or using a Mark where there are signs of conflict. Entrepreneurs rarely have a portion of their budget reserved for competitive challenges or litigation. Moreover, investors will stay clear of any company that may have to face a trademark conflict or litigation.

You need not wait until you use a trademark in connection with your goods or services in commerce before filing an application at the USPTO. You may file on an intent-to-use basis. However, the intent must be bona fide and you must use the trademark in commerce in connection with your goods or services before the USPTO will issue a Certificate of Registration.

Trademark applications look simple to complete, but in reality are quite technical. An incorrect response can cause the examining attorney to refuse to register the proposed Mark.

The manner in which a trademark is used can negatively affect the scope of protection it is afforded. Marks should be used as adjectives, not nouns or verbs. Generally, use of the Mark should be followed by the common descriptive term for the goods or services. For example, you should say "please pass me a KLEENEX® tissue" and NOT "please pass me a KLEENEX®."

When determining whether there is a likelihood of confusion as to whether the ordinary buyer (one that is not looking for subtle differences) would believe that two products or services originated from the same source, consider:

1. Similarity of the conflicting trademarks (the Marks' look, phonetic similarities, and underlying meanings)
2. Relatedness or proximity of the two companies' products or services
3. Strength of the senior user's Mark (the fame of the prior Mark)
4. Marketing channels used
5. Degree of care likely to be exercised by the consumer when purchasing the goods or services
6. The "second comers" intent when selecting the trademark
7. Evidence of actual confusion
8. Likelihood of expansion in product lines
9. The number and nature of similar Marks in use on similar goods
10. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion
11. The market interface between the applicant and the owner of a prior Mark
12. The extent to which the applicant has a right to exclude others from using the trademark on like goods
13. Any other established fact probative of the effect of use.

If you have a trademark or intellectual property concern in Westchester County, Stamford, or the surrounding communities in New York and Connecticut, contact our office by e-mail or call us at 914-949-9550 to set up a free consultation.