Copyright/Creative Commons, Trademarks, and Patents: Trademarks

Trademarks are the most esoteric of the intellectual property family. At first blush, all seems basic. One has a company, product, or service whose name or symbol they want to protect. As long as no one else is using it, it can be registered, right? Wrong. The most common reason for the rejection of a trademark application is "likelihood of confusion." If you are thinking about applying for a federal trademark, please read the USPTO's booklet Protecting Your Trademark, which explains this and other issues quite well.

On the other hand, what a trademark is is remarkably basic. It is a representation, in words or symbols, of a business, product, or service. One does not need to trademark a business name or the name of a product or service, but in doing so, legal protections are established. If one does not want to expend the time and money to register a trademark with the U.S. Patent and Trademark Office, there are alternatives. One can register a trademark with the Massachusetts Secretary of the Commonwealth's Corporations Division. However, the protections given would apply only to Massachusetts. If the business were to expand, a federal trademark might be warranted.

The section of the Trademark Act on registration begins "No trademark...shall be refused registration on the principal register on account of it's nature unless..." It is the unless that makes trademark registration complicated. While some of the reasons for rejection are clear cut- immoral, deceptive, scandalous matter, matter that disparages or provides a false connection, the registration of United States, state, municipal, and foreign flags, coats of arms, or insignia, using a representation of a living person without their permission, or use of a representation of a living President or a deceased President whose spouse is still alive without permission. Beyond those, there are common grounds for refusal.

• Likelihood of confusion. Just because your words or phrases are not trademarked, that does not mean you are free to use if there is the possibility that the words or phrases could be confused with another trademark. The key is to compare marks to others as to sound, appearance, and meaning and to compare goods/services as to similarities, use, and marketing. Examining attorneys consider the question "would consumers be likely to mistakenly believe that the goods or services come from the same source?" This also applies to the relatedness of classes. While classes are strong, there is overlap. For example, clothing stores are class 35 while shirts and sweatshirts are class 25. Selling shirts with a name similar to a clothing store could lead to confusion.
• Merely descriptive. The mark cannot be a mere description of a good or service or deceptively misdescriptive of them. Generic terms are not allowed.
• Geographically descriptive or geographically nondescriptive. Geographic terms are allowed in trademarks if the primary significance of the use is to mark geographic significance, allowing the public to believe there is a strong connection between the good/services and the geography described. In short, there must be a distinct and true quality to the geographic reference.
• Primarily merely a surname. Interestingly, surnames have been allowed when the commercial expression is deemed proper. Hence, P.J. FitzPatrick, Inc construction services was granted their trademark (on appeal) while Giger MD physical therapy and exercise equipment was denied.
• In addition, one of the common grounds for refusal is when an applicant does not show a proper specimen of the trademark.

The searching of registered Trademarks is done through the Trademark Electronic Search System (TESS). While one might think that a simple search of words would indicate if a word or phrase is available to be trademarked, this might not be the case. If your planned mark might lead to confusion with another registered mark, it might not be approved. Your best move would be to search similar words to make sure your mark won't be at risk of being rejected.

Something related to trademarks are internet website domain names. Unlike a business name, a domain name definitely needs to be registered. The Internet Corporation for Assigned Names and Numbers (ICANN) has oversight of naming conventions, but registering a domain name is handled by authorized domain name registrars.

There is a chance that one could register a domain name and in using the domain name violate trademark law. The easiest way to avoid this and the litigation that could follow is to check the USPTO Trademark Database to make sure the name is not being used in commerce by someone else.