A trademark is a device to identify the origin of the goods or services so marked. Trademarks must be associated with a particular goods or service. Trademarks also serve as a measure of quality assurance in that the goods so marked are assumed of equal quality and functionality.
As long as the trademark is capable of identifying and distinguishing specific goods or services, it may take almost any form. Protectable trademark devices include letters or words, logos, pictures, slogans, product shapes, colors, sounds and even smell so long as the mark is capable of identifying specific goods or services.
Generally, marks fall into one of five categories: fanciful, arbitrary, suggestive, descriptive, or generic; the so called Abercrombie spectrum . The category your mark falls into will significantly impact both its registrability and your ability to enforce your rights in the mark.
A trademark device must be distinctive in that it must be capable of distinguishing the goods and services so marked from the goods and services of others. The determination of whether a device is considered distinctive depends upon the nature of the device which may be roughly categorized in order of distinctiveness or strength as follows:
Fanciful devices are those that have been conceived and created solely for the purpose of acting as a trademark, e.g. EXXON or KODAK. These terms carry no meaning other than to represent the goods or services sold under the mark.
Arbitrary devices are those that have a common meaning unrelated to the goods or services so marked, e.g. the use of the word marks Apple and Sun for computer equipment.
Fanciful and arbitrary devices are considered the strongest marks as they are inherently distinctive. Fanciful and arbitrary marks convey nothing about the nature of the product (quality, characteristics or ingredients) except through market knowledge. The word mark EXXON relays nothing to the consumer about the product. However, the public has knowledge through the marketplace that EXXON is used in association with energy products.
Suggestive marks use terms that imply or suggest a function, quality or characteristic of the goods or services without explicitly describing such. Suggestive marks are protectable provided there is some abstraction between the mark and the suggested function, quality or characteristic of the goods or services. Suggestive marks then require some level of thought, imagination or perception to draw a connection to the nature of the goods or services so marked.
4. Merely Descriptive
Merely descriptive marks provide a direct connection to the nature of the goods without thought, imagination or perception. The mark APPLE used in connection with selling apples is wholly descriptive of the goods and provides no indication of the source or identity of the goods. Descriptive marks then are not inherently distinctive since they describe the intended function, quality or characteristic of the goods or services. Descriptive marks are ineligible for trademark protection unless they have acquired secondary meaning in the marketplace, i.e. through long use the mark has become a source identifier.
The line between suggestive and distinctive is not always clear and has been the subject of numerous trademark cases. “[A] term is suggestive if it requires imagination thought and perception to reach a conclusion as to the nature of the goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods” 
Factors to consider in distinguishing between suggestive and descriptive terms:
- Dictionary test – Does the definition of the term refer to qualities or characteristics of the goods or services at issue? If so, analysis favors merely descriptive.
- Imagination test – Must a consumer perceiving the term, make a leap of imagination in order to understand the term’s relationship to the goods or services? If so, the analysis favors suggestive.
- If the term immediately conveys to the consumer information about the quality or characteristics of the goods or services, the term is deemed descriptive.
- Competitors’ need test – If the term is needed by others who market similar goods or services in order to describe the quality of those goods or services, the term will likely be deemed merely descriptive.
- Third party actual use test – If the term has been used by others who produce similar goods or services to describe the quality or characteristics of their products, the term will likely be deemed merely descriptive.
Even if a term is deemed to be merely descriptive, the term may still acquired distinctiveness with a showing of secondary meaning in the marketplace. For example, the mark EVERREADY is a merely descriptive term for a battery product (ever ready batteries). However, through lengthy and persistent advertising in the marketplace, consumers have come to understand that the term EVERYREADY also represents a brand of batteries; the secondary meaning. The term EVEREADY has become distinctive of the owner’s goods or services in commerce. Secondary meaning is a measure of the consumer’s perception of the term as used in the marketplace
A generic device is one that conveys information about the product or service and as such, is ineligible for trademark protection. For example, a mark of SOAP for soap products only identifies the product itself and provides no indication of the source or identity of the goods. In addition to generic terms, a registered trademark may become generic if the owner allows its misuse to the extent that the mark becomes a mere description of the goods or services, e.g. ASPIRIN, once trademarked by Bayer in the US, has become a generic term and is no longer eligible for registration. Similarly, ESCALATOR, once trademarked by Otis Elevator, has become a genericized term for moving stairs.
Other Potential Grounds for the USPTO to Refuse Registration
The USPTO will also refuse registration of a proposed mark for many other reasons, including but not limited to the mark being: a surname; geographically descriptive of the origin of the goods/services; disparaging or offensive; a foreign term that translates to a descriptive or generic term; an individual’s name or likeness; the title of a single book and/or movie; and matter that is used in a purely ornamental manner. While some of these refusals are an absolute bar to registration, others may be overcome by evidence under certain circumstances. For more information about these and other possible refusals, see Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP).
Trademark Selection Considerations.
- Strength of the mark.
- Likelihood of confusion.
- Geographic descriptions.
- Deceptive, disparaging or offensive.
- Misspelling of descriptive or generic wording.
- Individual’s Names or likeness without consent.
- Title of a single book or movies.
- Purely ornamental or decorative matter.
Other Factors in Selecting a Mark
You should also consider other important factors when selecting your mark, such as whether the public is likely to be able to remember, pronounce, and spell the selected mark. If you plan to market your goods or services outside the United States under the same mark, consider whether the U.S. mark might have another meaning when translated into a foreign language, particularly if, for example, the translated word could be considered offensive. Similarly, when using a foreign word in a US trademark, consideration of the translation must be given to avoid US marks with the same translated wording, or with generic or descriptive terms, e.g. VINO vs WINE, which is a generic term.
Likelihood of Confusion with Other Marks
The USPTO examines every application for compliance with federal law and rules. The most common reason to refuse registration is a “likelihood of confusion” between the mark of the applicant and a mark already registered or in a prior-filed pending application owned by another party.
The USPTO determines that a likelihood of confusion exists when both;
- the marks are similar, and
- the goods and/or services of the parties are related such that consumers would mistakenly believe that they come from the same source.
Similar marks or related goods/services by themselves are not enough to support a finding of a likelihood of confusion, unless a court has held that the mark is actually a famous mark. That is, generally two identical marks can co-exist, so long as the goods and services are not related.
Each application is decided on its own facts and no simple mechanical test is used to determine whether a likelihood of confusion exists. Therefore, before filing your non-refundable application, it is very important for you to determine whether your proposed mark is likely to cause confusion with another mark. This determination can be made only after doing a thorough trademark clearance search, as discussed on our Trademark Clearance page.
Provided that one of the marks is not considered a famous mark, there is a Likelihood of Confusion when both;
- Marks are similar, i.e. they look alike, sound alike have similar meaning or create similar commercial impressions, and
- Goods and services are related, i.e. consumers could mistakenly believe the goods and services come from the same source.
Similarity of Marks
To determine whether a likelihood of confusion exists, the marks are first examined for their similarities and differences. Note that in order to find a likelihood of confusion, the marks do not have to be identical. When marks sound alike when spoken, are visually similar, have the same meaning (even if in translation), and/or create the same general commercial impression in the consuming public’s mind, the marks may be considered confusingly similar. Similarity in sound, appearance, and/or meaning may be sufficient to support a finding of likelihood of confusion, depending on the relatedness of the goods and/or services.
The following are examples of marks that would be considered similar:
T.MARKEY vs TEE MARQUE
T.MARKEY vs T.MARKEY
The marks look very similar, even though the one on the right uses a stylized font.
LUPO vs WOLF
The marks are similar since WOLF is the English translation of the Italian word LUPO.
An ANDROID logo picture (design element) standing alone
The word term ANDROID with the same logo design element.
Because the marks include the same design element, they create a similar overall commercial impression, even though the one on the bottom also includes words plus the design.
CITY WOMEN vs CITY GIRL
The marks convey a similar general meaning and produce the same mental reaction.
Relatedness of Goods and/or Services
Even if two marks are found to be confusingly similar, a likelihood of confusion will exist only if the goods or services represented by the marks are, in fact, related. Whether the goods or services are related is determined by considering the commercial relationship between the goods or services identified in the application with those identified in the registration or an earlier-filed application. In order to find a relatedness between goods or services, it is not essential that that the goods or services are identical. It is sufficient that they are related in such a manner that consumers are likely to mistakenly assume that they come from a common source. The issue is not whether the actual goods or services are likely to be confused but, rather, whether a likelihood of confusion would exist as to the source of the goods or services.
Goods and Services
The USPTO Acceptable Identification of Goods and Services Manual (ID Manual) contains a listing of acceptable identifications of goods and services. For an online TEAS Plus application, the description listed within the ID Manual must match the goods or services represented by the mark. If not, you may request that the description be added to a particular class by e-mailing the Office. Otherwise, you must use the online TEAS application which allows the free form description of the goods or services. Click here to search the ID Manual. For information about USPTO policy on identification and classification of goods and services, please also consult Chapter 1400 of the Trademark Manual of Examining Procedure (TMEP).
Close Doesn’t Count
The goods or services identification must match the goods or service represented by the mark. If the goods or services do not match the class description, major problems in the registration process may occur which may ultimately result in registration refusal.
A mark applicant may not add goods or services later and may not switch between. In order to add additional goods or service, a new application must be filed. A goods and services description may be modified only to add clarification to the exact nature of the goods and services.
The ID must not indicate a manner of use, i.e. it should not indicate how the goods are marketed. The ID should specify either the actual goods or services upon which the mark is used.
Only select ID for goods or services for which you are actually using the mark or have a bona fide intent to use the mark. Do not select the entire class as this will cause problems in the registration process.
You must also be able to identify the goods and/or services to which the mark will apply, clearly and precisely. The identification of goods and/or services must be specific enough to identify the nature of the goods and/or services. The level of specificity depends on the type of goods and/or services. For examples of acceptable identifications, please consult the Acceptable Identification of Goods and Services Manual (ID Manual).
Under U.S. Trademark law, class headings from the International Schedule of Classes of Goods and Services by themselves are not acceptable for registration purposes. The specific items of goods and/or services must be listed.
Dates of First Use
Date of First Use vs. Date of First Use in Commerce.
Date of first use is exactly that; the date the mark was first used in connection with goods or services for any purpose.
The date of first use in commerce is the date of the first bona fide sale or transportation in commerce which may lawfully be regulated by Congress. There are two important elements to establishing first use in commerce;
- The mark must have been used in connection with a bona fide sale or transportation of the goods or services, and
- The sale or transportation must amount to something more than merely a token use.
There must be an actual use of the mark in connection with the goods or services for the purpose of making a sale. The use may be from advertising, marketing or actual sales. The transportation or sale must not be token and must be followed by activities providing a continuous effort or intent to use the mark.
While the federal courts have held that a mark placed on goods and a single sale or shipment may be sufficient to support an application to register the mark, that shipment must also be accompanied by or followed by activities which indicate a continuing effort or intent to use beyond that initial sale. Hence, the first use in commerce date is really the first date that you placed your mark on your goods or you made sales in advertising and marketing in connection with your particular services.
Note that a service mark is different than a trademark in that a trademark is an indicator of goods, while a service mark is an indicator of services. First use in commerce for goods may be satisfied by placing the mark on the goods or using the mark in connection with the goods, e.g. on packaging or labels. First use in commerce for services may be satisfied by using the mark in conjunction with the offering or providing of the service, e.g. the use of the mark in connection with sales, promotions or advertising materials for the service.
For any trademark to obtain protection, it must be non-functional.
Mechanical – If the shape of the device is such that it is critical to the type of device, or that the shape is so superior that others could not compete without adopting the shape, the shape will likely be deemed functional.
Aesthetic – Where the shape does not contribute to the mechanical function of the device, but rather its main purpose is to contribute to the product’s aesthetic appeal, the shape will likely be deemed non-functional. Protection is not allowed if doing so would hinder competition by limiting the range of alternative designs available to competitors.
 Abercrombie & Fitch, 537 F.2d 4 at 13 (2d Cir.1976).
 Stix Products Inc. v. United Merchants and Manufacturers, Inc.295 F.Supp. 479, 488, 160 USPQ 777, 785 (SDNY 1968).