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Valid and Invalid Uses of Words, Number, Symbols, etc. as Trademarks This is not an exhaustive list or a conclusive list, each potential trademark is considered individually by the USPTO and the courts with respect to the goods, services & facts involved. The applicable law for trademarks: Trademark Act §§1, 2 and 45, 15 U.S.C. §§1051, 1052, and 1127. The applicable law for service marks: Trademark Act §§1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127. For examples of Strong Trademarks vs. Weak Trademarks, see StrongTrademark.com |
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VALID MARK- |
NOT VALID MARK- |
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A trademark should be distinguishable from the rest of the text by use of a different font, different size font, different color or some other designation to consistently indicate these words or this symbol is being claimed. |
When the alleged trademark is not set apart in any way to show prominence with respect to other words, for instance a mission statement, like a slogan, can serve as a trademark, but if the words are mixed in with other words and not set off to describe the source of the product or service, it is just a slogan not a trademark. |
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A trademark should be used as an adjective (not a noun or verb) to indicate that the product or service comes from a particular source. |
When the alleged trademark is used solely as a noun, such as if the specimen uses the trade name with an address and does not show what goods or services are connected with the trade name. (A trade name typically is associated with a business not specific goods or services.) |
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The generic name of the class of goods or services should follow the trademark, such
as Bond- |
When a claimed trademark is merely used to describe the qualities of a product and not used in a trademark sense to describe the source of the product. Example: The mark SOFT.COM for facial tissues is merely descriptive of the tissue. |
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The appropriate symbols or the word ‘brand’ should be placed next to the mark to designate that this is a claimed trademark. TM or SM can designate unregistered trademarks or services and ® for USPTO registered trademark. Example: DealFinderSM for an unregistered trademark.. All three of these are correct uses: Scotch brand transparent tape Scotch® brand transparent tape Scotch® transparent tape Note: Registration in a state of the United States does not entitle a person to use
the federal registration notice ®. Du- |
When a domain name that is merely used as a domain name (noun that acts as address on internet) and not used to describe the source of the goods or services. |
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The first time the mark is used in text, a footnote may indicate the source of the mark. |
The use of a mark in connection with advertising, promotion and preparatory activities for services to be available at some time in the future cannot support registration. |
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If a potential trademark, often trade dress, is functional, it is invalid as a mark whether registered or not. A feature is functional if it is essential to the use or purpose of the product or it affects the cost or quality of the product. See Functional Marks for more information. |
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Background designs such as common geometrical shapes and borders are not distinctive uses of a mark. |
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Titles of single works are not registrable but a series of works may be. |
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Informational matter that is descriptive |
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Model or series numbers and grade designations that are not inherently distinctive or have acquired distinctiveness |
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Names of artists and authors |
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Telephone numbers such as 1- |
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See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied for a USPTO trademark and have been refused. |
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