Trademarks being Used as Trademarks
Trademarks are any word, term, name, symbol, or device, or any combination thereof that are used in commerce as brand names, domain names, tag lines, slogans, non-
Federal trademark infringement, 15 U.S.C. S 1114, and federal unfair competition, 15 U.S.C. S 1125(a)(1)(A), are measured by identical standards. “To prove either form of Lanham Act violation, a plaintiff must demonstrate that (1) it has a valid and legally protectable mark; (2) it owns the mark; and (3) the defendant's use of the mark to identify goods or services causes a likelihood of confusion.” A&H Sportswear v. Victoria's Secret Stores, 237 F.3d at 210 (3rd Cir., 2000).
To be a valid mark, a potential mark must actually function as a trademark:
Not everything that a party adopts and uses with the intent that it function as a trademark necessarily achieves this goal or is legally capable of doing so, and not everything that is recognized or associated with a party is necessarily a registrable trademark. As the Court of Customs and Patent Appeals observed in In re Standard Oil Co., 275 F.2d 945, 947, 125 USPQ 227, 229 (C.C.P.A. 1960):
The Trademark Act is not an act to register words but to register trademarks. Before there can be registrability, there must be a trademark (or a service mark) and, unless words have been so used, they cannot qualify for registration. Words are not registrable merely because they do not happen to be descriptive of the goods or services with which they are associated.” Trademark Manual of Examining Procedure (TMEP) 1202.
Also, an unregistered mark must actually have been used as a trademark [is a valid mark] to be protected under trademark law. "[A] plaintiff must show that it has actually used the designation at issue as a trademark"; thus the designation or phrase must be used to "perform[ ] the trademark function of identifying the source of the merchandise to the customers." Microstrategy Incorp. v. Motorola, 245 F.3d at 341 (4th Cir., 2001) quoting Rock & Roll Hall of Fame v. Gentile Prods., 134 F.3d 749, 753 (6th Cir. 1998).
Failure to Function as a Mark
Registration of a trademark with the USPTO under the Trademark Act may be refused on the ground that the subject matter for which registration is sought does not function as a mark (15 USC 1051, 15 USC 1052, 15 USC 1053, 15 USC 1127).
The following are examples of where a potential mark fails to function as a mark:
• Potential mark is used solely as a trade name. Excerpt from TMEP §1202.01:
In re Diamond Hill Farms, 32 USPQ2d 1383 (TTAB 1994). DIAMOND HILL FARMS, as used on containers for goods, found to be a trade name that identifies applicant as a business entity rather than a mark that identifies applicant’s goods and distinguishes them from those of others.
• Potential mark is mere ornamentation. Excerpt from TMEP §1202.03:
In re Dimitri’s Inc., 9 USPQ2d 1666, 1667 (TTAB 1988); In re Astro-
• Potential mark is merely informational matter. Excerpt from TMEP §1202.04:
In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998). DRIVE SAFELY perceived as an everyday, commonplace safety admonition that does not function as mark; In re Manco Inc., 24 USPQ2d 1938, 1942 (TTAB 1992) THINK GREEN and design found unregistrable for weatherstripping and paper products, the Board stating, “[R]ather than being regarded as an indicator of source, the term ‘THINK GREEN’ would be regarded simply as a slogan of environmental awareness and/or ecological consciousness ....” See also 1301.02(a)).
• Potential mark identifies the name or pseudonym of a performing artist or author. Excerpt from TMEP §1202.09(a):
In re Chicago Reader Inc., 12 USPQ2d 1079 (TTAB 1989) CECIL ADAMS, used on the specimen as a byline and as part of the author’s address appearing at the end of a column, merely identifies the author and does not function as a trademark for a newspaper column.
• Potential mark identifies a model number or grade designation. Exceprt from TMEP §1202.16:
In re Dana Corp., 12 USPQ2d 1748 (TTAB 1989) Alphanumeric designations, such as “5-
• Potential mark is merely a background design or shape and is not separable from the entire mark. Excerpt from TMEP §1202.11:
Common geometric shapes, when used as vehicles for the display of word marks, are not regarded as indicators of origin absent evidence of distinctiveness of the design alone. Additionally, the Supreme Court stated in Wal-
• Potential mark identifies a process, system or method. Excerpt from TMEP §1301.02(e):
In re Universal Oil Products Co., 476 F.2d 653, 177 USPQ 456 (C.C.P.A. 1973) Term not registrable as service mark where the specimen shows use of the term only as the name of a process, even though applicant is in the business of rendering services generally and the services are advertised in the same specimen brochure in which the name of the process is used.
• Potential mark is used to refer to activities that are not considered “services.” Excerpt from TMEP §1301.01:
The following criteria have evolved for determining what constitutes a service: (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service. In re Canadian Pacific Limited, 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979).
• Potential mark is used solely as a domain name. Excerpt from TMEP §1215.02:
A mark composed of a domain name is registrable as a trademark or service mark only if it functions as a source identifier. The mark as depicted on the specimen must be presented in a manner that will be perceived by potential purchasers to indicate source and not as merely an informational indication of the domain name address used to access a web site. See In re Eilberg, 49 USPQ2d 1955 (TTAB 1998).
• Potential mark is used solely to identify a character. Excerpt from TMEP §1301.02(b):
[P]ersonal names (actual names and pseudonyms) of individuals or groups function as marks only if they identify and distinguish the services recited and not merely the individual or group. In re Mancino, 219 USPQ 1047 (TTAB 1983) Holding that BOOM BOOM would be viewed by the public solely as applicant’s professional boxing nickname and not as an identifier of the service of conducting professional boxing exhibitions; In re Lee Trevino Enterprises, Inc., 182 USPQ 253 (TTAB 1974) LEE TREVINO used merely to identify a famous professional golfer rather than as a mark to identify and distinguish any services rendered by him; In re Generation Gap Products, Inc., 170 USPQ 423 (TTAB 1971) GORDON ROSE used only to identify a particular individual and not as a service mark to identify the services of a singing group.
For more examples see Valid and Invalid Uses of Words, Number, Symbols, etc. as Trademarks.
Different Types of Trademark Registrations
Not Just Words: Types of Marks-
There are usual types of trademarks: Word Marks (standard character format), Design Marks (stylized format, 2-
There are also unusual types of trademarks including:
Like word and design trademarks, unusual types of marks must also function as marks but not be functional as marks. Potential marks that are just sounds or shapes or colors but do not identify and distinguish any goods or services are not registrable as trademarks.
Trademarks are Powerful Tools of Commerce
Being able to associate a product or service with ® to designate a federally registered trademark is a strong business tool. Purchasing decisions are continually influenced by trademarks by distinguishing products from one another and indicating a level of authenticity and quality about products and services. The International Trademark Association (INTA) in their Top Ten Reasons Why You Should Care About Trademarks calls a Trademark the Most Efficient Commercial Tool Ever Devised.
Federal USPTO Trademark Registration
There are many statutory advantages of Federal Registration for trademarks on the Principal Register above and beyond those provided by common law including:
A few of these advantages apply for marks on the Supplemental Register as well. See Comparison of Principal Register with Supplemental Register for more information.
How Can a “Does Not Function as a Mark” Refusal be Avoided?
Have a Five-
We suggest a Not Just Patents Five Step Verification for Planning for a Successful Trademark:
To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, a potential trademark user should:
5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.
We can provide a quick and economical Response to Office Action (ROA). See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.
Not Just Patents ® is a registered trademark of Not Just Patents LLC with a USPTO Federal Trademark Registration (R/N 3556868-
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