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-functional and distinctive packaging and labeling designs, etc. to indicate the source of a good (product) or service and distinguish (make distinctive) one good (product) or service from another. How a potential trademark is USED is vital to its legal protectability both as a common law trademark and its potential to be federally registered (symbolized with a federal trademark symbol ®).

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-Gods Inc., 223 USPQ 621, 623 (TTAB 1984). A small, neat and discrete word or design feature (e.g., small design of animal over pocket or breast portion of shirt) may be likely to create the commercial impression of a trademark, whereas a larger rendition of the same matter emblazoned across the front of a garment (or a tote bag, or the like) may be likely to be perceived merely as a decorative or ornamental feature of the goods.

• 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 “5-469X,” held unregistrable for universal joint couplings; evidence insufficient to establish distinctiveness and recognition as a mark. Cf. In re Clairol Inc., 457 F.2d 509, 173 USPQ 355 (C.C.P.A. 1972). SWEDISH CRYSTAL found to be a registrable trademark, not merely a color designation, for a hair coloring preparation, the Court relying on the arbitrariness of the mark, its manner of use and the fact that it was always used in addition to a shade designation.

• 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-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211-212, 54 USPQ2d 1065, 1068 (2000) that color can never be inherently distinctive.

• 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

  • Trademarks associated with goods or products;
  • Service marks associated with the delivery of services;
  • Certification marks associated by the characteristics of someone’s goods or services; and
  • Collective marks indicated by membership in an organization.

Not Just Words: Types of Marks-Usual and Unusual

There are usual types of trademarks: Word Marks (standard character format), Design Marks (stylized format, 2- or 3-dimensional); and Composite of Words & Design (words in stylized format protected only as shown with a design).

There are also unusual types of trademarks including:

  • Shape (example: Bottle shape for wine, cola); (see more examples of three-dimensional trademarks)
  • Color (example: Pink color for insulation);
  • Sound (example: TiVo-The mark consists of a synthesized vibraphone-like sound playing the musical note middle B, just below middle C, and the musical note B, just above middle C simultaneously) (example: In re General Electric Broadcasting Company, Inc., 199 USPQ 560, Sound of ship’s bell clock capable of indicating source and registrable on Principal Register upon showing of acquired distinctiveness); (Listen to actual sound trademarks at the USPTO web sites at such as Registration 74158626 HARLEM GLOBETROTTERS - Entertainment Basketball - "Sweet Georgia Brown")
  • Scent (example: Medicated transdermal patches where the mark is a scent mark having a minty scent by mixture of highly concentrated methyl salicylate and menthol.), (example: In re Clarke, 17 USPQ2d 1238, Scent of plumeria blossoms registrable as a mark for thread and yarn); and
  • Motion (example: Flying pegasus for movie studios).

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:

  • Can be used against future applications of confusing similar marks by the USPTO;
  • Mark is easy to find for search reports;
  • Owner can use ® to symbolize federal registration;
  • Incontestability of mark after 5 years;
  • Statutory presumption of validity;
  • Statutory presumption of ownership;
  • Statutory presumption of distinctiveness or inherently distinctive;
  • Statutory presumption of exclusive right to use the mark in commerce;
  • Provides access to anti-counterfeiting statutes. For example, a trademark on the Principal Register can be recorded with US Customs and Border Protection (CBP) to prevent importation of infringing goods;
  • Ability to bring federal criminal charges against traffickers in counterfeits;
  • Ability to stop advertisers using online media and social networking sites from abusing or using trademarks;
  • Use of the U.S. registration as a basis for prior use to obtain registration in foreign countries without having actual use in commerce in those countries.

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-Step Verification done where Step 4 is a careful review of your specimen.

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:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

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-service mark for Legal Services) on the Principal Register.

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Call 1-651-500-7590 or email for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Evolved Means, Method or Format-Is your trademark registration obsolete?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

USPTO Search Method for Likelihood of Confusion

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

Decrease Your Vulnerability to Cancellation

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Trademark Integrity: Are your IP Assets Vulnerable?

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®

How to Respond to Office Actions  Final Refusal

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 TTAB Document Service  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS, TEAS RF and TEAS plus  

Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses

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