Trademark Registration on the Supplemental Register

Most people are aware of the numerous benefits of owning a trademark registration on the Principal Register of the United States Patent and Trademark Office (USPTO). In fact, trademark owners are urged by trademark attorneys to select distinctive marks in order to be able to, upon use in interstate commerce, be registered there and enjoy numerous presumptions such as validity, ownership, and notice. However, the Supplemental Register also has value, especially when the alternative is out of the question initially.

Before the benefits of being supplementally registered is discussed, it is important to understand that which a supplemental registration does not provide. Marks are often relegated to the Supplemental Register because, at the request of the USPTO examining attorney, the marks are merely descriptive and therefore not a distinctive identifier of the source of the goods or services to which the mark pertains. Such placement does not afford the exclusive right to use the mark in commerce in connection with its identified goods or services. Equally important, it does not serve as prima facie evidence of the validity of the registered mark or of the trademark registrant's ownership of the mark. Finally, it may be an admission that the mark is not inherently distinctive.

While these drawbacks obviously warrant a mark owner's desire to be registered on the Principal Register, a supplemental registration has benefits of its own. In fact, some entities choose to have a brand that tells consumers what it is they are offering (e.g. Pizza Restaurant) as opposed to an inherently distinctive mark (.e.g. Domino's®) that requires effort to create consumer recognition. Such marks are not going to warrant principal placement, although they be supplementally registered. After five years on the Supplemental Register, the mark may qualify for the Principal Register due to it having acquired distinctiveness. It is worth noting that both allow the owner to use the registered trademark ® symbol, sue in federal court, and take advantage of certain international treaties.

Thus, any registration with the USPTO is better than having no trademark registration at all. While ultimately the Principal Register provides the most benefits and best protection, the Supplemental Register should be considered where an entity prefers what is likely a merely descriptive mark at the outset or has failed to acquire the requisite distinctiveness to be registered on where many deem as the preferred spot.

Brian A. Hall is an attorney and partner of Traverse Legal, PLC, a law firm focused on complex litigation, intellectual property matters, internet law and trademark prosecution. Speak with a trademark attorney today and learn more about the numerous benefits of owning a trademark registration on the Principal Register of the United States Patent and Trademark Office (USPTO).

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Trademark International Class - Class 16 (Paper Goods and Printed Matter)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Let's take a closer look at one of these trademark classes - class 16.

What is International Class 16 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 16's short title is paper goods and printed matter. But, as with anything trademark, there's more to it than that.

Anything that's made of paper or is printed is in IC 16, which includes things like posters, journals, greeting cards, art prints, magazines, books, calendars and on and on.

What about Book Titles?

This is a caveat worth exploring a bit. Titles of a single creative work are not protected by trademark law; however, trademark registration may be possible if the title is used on a series of creative works. Let's delve into this a bit further.

Single creative works consist of materials where the content does not change, such as a book, a DVD, downloadable songs and a film. Single creative works do not include periodically issued publications, such as magazines, newsletters, brochures, comic books, comic strips or printed classroom materials, because the content of these works change with each issue.

When it comes to titles for a book series, the rationale is the same. While the title stays the same, the content changes. Take a look at the filing for Ring of Fates, part of The Final Fantasy catalog: "a series of books featuring fictional stories and/or fantasy stories."

What Else is in International Class 16?

The USPTO has 1515 accepted descriptions that fit into IC 16; check them out here.

Seems like with any of these trademark classes, there always seems to be the oddball item or two and IC 16 is no exception. Here are a few items living in IC 16 that seem to be a bit off kilter:

• cd shredders for home or office use
• globes
• cosmetic pencil sharpeners and removing paper
• money clips

Shannon Moore is the General Manager for TradeMark Express. Since 1992, TradeMark Express has met the needs of their clients with comprehensive research, application preparation, attorney referrals and trademark consultation. For further details, please visit us on the web at TradeMark Express or call Shannon directly at 800.340.2010.

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Overview of Trademark Law

Trademark law gives companies the exclusive right to use a given name or design, called a “mark,” for the purpose of identifying the source the of that company’s goods or services. Trademark law is an incentive-based system. Because it gives companies the exclusive right to use a mark in connection with certain goods or services, the company can create a brand that is recognizable by the consuming public. That trademark would be associated with and incorporated into every advertisement the company runs for its goods or services. Repetition of those advertisements containing the trademark causes consumers to associate the mark with the goods and, with enough repetition, consumers buy the goods.

A brief, but related, digression. We all know that if you see a product advertised frequently enough, the product will sell. You might even be one of the people who buys the product. The thinking process by which you reached the decision to buy the product is not an intellectual, logical process. It’s a function of the way the human mind works. Continually hearing a repeated message makes the message more familiar, more real, and, eventually, more true. As the adage says, “even the boldest lie becomes the truth if you scream it loud enough and long enough.” I call this the “Lie = Truth” Adage. Sadly, I frequently encounter the “Lie = Truth” Adage in litigation. I also know of some politicians and terrorist masterminds who are experts at exploiting this fact of human nature.

Back to trademarks. The advertising departments at most companies know the “Lie = Truth” Adage can be very successful in advertising. The cynic would pump his fist in the air yell “Down with the corporations, and power to the people! All the corporations care about is taking our money at all costs!” While we can point to some recent examples that might make it challenging to argue against this viewpoint, as to the overwhelming, vast majority of companies, that view simply cannot be supported.

Trademark law creates very strong incentives for companies to make the highest quality product possible and to advertise their merits and attributes accurately. Aside from the fact that companies invest anywhere from tens of thousands to millions of dollars into their trademark(s), all it takes is one bad product line to tarnish a companies image in the mind of the consumers who buy their products. Both of these factors hit companies where it hurts them most: in the pocketbook. So, while companies clearly have to perform a balancing act of creating a high quality product, keeping costs down, and pulling in as many purchasers as possible, they have very strong incentives to create a quality product that they will associate with their trademark.

To be eligible for any level of trademark protection, a mark must be “distinctive” and not merely “descriptive” of the goods or services. Whether a mark is distinctive and “how” distinctive or strong the mark is can be determined by a sliding scale. Marks can be (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5) generic. Whether a particular mark is protected by trademark law depends on the strength category into which it falls.

A fanciful mark is one that is invented for the sole purpose of being a trademark. For example, EXXON is a fanciful mark. It is a word that does not exist in the English language and was created only for the purpose of identifying the oil and gas company.

An arbitrary mark is typically an existing word that is arbitrarily applied to a product or service that has nothing to do with the word. For example, the mark APPLE as applied to sales of computers.

A suggestive mark is a mark that suggests a quality or characteristic of the goods or services. Suggestive marks require some level of imagination to bridge the connection between the mark and the product. For example, the mark PENGUIN as applied to refrigerators.

A descriptive mark is a word that merely describes a quality or characteristic of a product. Descriptive marks are not entitled to trademark protection unless they have obtained “secondary meaning” under the trademark law. An example of a descriptive mark would be LIGHT to identify a lightweight notebook computer.

A generic mark simply identifies by name a particular product. Generic marks are never entitled to trademark protection. An example of a descriptive mark would be MODEM in connection with modem sales. If trademark protection were allowed in this instance, the company could essentially remove the word “modem” from the English language.

Henry J. Fasthoff, IV
Principal & General Counsel
HoustonBusiness.com

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XEROX Trademark -Prevent Brand Genericide With Proper Use

Internet entrepreneurs often fail to learn and observe the basic rules to INSURE valuable intellectual property rights, including their trademarks and brand names. Learn the proper rules of trademark usage lest you awake to learn that your most valuable business asset has been lost.

Rule No. 1: A generic term is not a trademark.

Already have a headache? Take an aspirin. Yes, once a trademark, now a fallen victim to genericide.

Several important concepts as to "generic" usage and its impact upon brand equity should be learned. We will have some fun in this and the article to follow with some examples, some of which will surprise you.

1. A "coined" term for an Innovative Product. Even a strong, coined mark such as XEROX or GOOGLE can suffer impairment of rights, or in the worst case, extinction without proper attention to Use of the mark, both in advertising, and by the public. This is mostly likely to happen with a product that did not previously exist, since the public has no generic point of reference for the new goods or services being offered to them. As a result, without constant vigilance, the terms can become identified not with the brand owner as the source identifier for the goods or services, but with the services and goods themselves. The pictured ad from XEROX focuses upon informing the pubic as to the proper generic terms to associate with their products, and maintains the focus upon XEROX as a brand.

2. Terms Already Generic. On the other hand, some terms like "Brassiere" were generic to begin with, and no well-advised client should Select much less Use such a term as a trademark. Generic terms are not trademarks, and never will be. Select wisely before one begins Use, since efforts to Register and Enforce may be in vain.

Use of generic and descriptive terms in domain names is also a major issue. Clients are often told by big shot Internet Marketing Gurus to Select domains which are generic or which describe the goods or services. While may be a great domain for searching and marketing sex, it will never be a brand.

3. Pictures of Generic Products. A photo of a zipper, a generic product, can not function as a trademark. XEROX is known for its efforts to teach others how to properly use its XEROX mark. Their recent ad showing a photo of a zipper made this point perfectly. (See resource box for link to picture).

4. Generic Terms Used in a Arbitrary or Distinctive Manner. Terms which are generic for some usages have been held to be valid trademarks when applied differently. Cross reference this point to the types of marks, and Selection. For example "apple" as applied to a type of fruit is generic. As applied to computers, it is "arbitrary." A less obvious example is SIDE DISH, which was held not generic for frozen potatoes even though it would be generic "for food served to accompany a main dish." Confusing, you bet!

Headache? Take some bufferin. Just an example of a trademark held descriptive, not generic. (But that's a topic for another day).

"What's an aspiring Brand Owner to Do?"

1. Use Your Trademark as an Adjective-A Rule For Every Brand

Wise brand owners always use their marks in advertising as an "adjective" in combination with the generic term for the product or service. This is particularly important where the product is new and unique; it runs the risk that "the trademark will become the thing itself." (Aspirin for example). Here's an example of "curiously strong" usage:

ALTOIDS® peppermints

Inclusion of both terms together, with the brand being more distinctive in appearance, reminds the consumer of the generic term, as well as the particular brand of the generic.

2. Monitor Public Usage. Learn from the XEROX trademark program. Efforts do not end with monitoring one's own advertising. Every brand owner must learn the rules and review content but this is simply the beginning. The XEROX usage program goes a step further, and teaches the public at large as to how its mark should be used. It's a subtle reminder not to say, "Can you "Xerox" this for me?" Instead, the generic term is "copy." XEROX is doing a wonderful job of teaching others how to use its mark! You can learn from this, and do the same.

We advise our clients to contact us when they see an article on the Internet that mistakenly uses brand in a generic sense. We write polite letters calling the improper use to the innocent offender's attention. Most people are happy to correct the usage, which if unattended, can lead to genericide.

3. Don't think Generic, think Distinctive. Unless you are certain you can successfully Select and Use a generic term as a trademark for goods and services in an arbitrary fashion (for goods other than the ones they identify generically), "Don't try to Select or Use them to build a brand, period."

4. Re read Rule Number 1 at the beginning of this article.

The BRANDAIDE™ acronym "INSURE" stands for Investigate, Noodle, Select, Use, Register and Enforce. INSURE simply reminds brand owners to constantly monitor the status of brand protection on an ongoing basis, as well as the steps to follow in doing so. It is not easy however to separate Selection from Protection or Use; or any of them from the need for a strong Enforcement program. As a result, there will some overlap among the areas, the law of cause and effect applied to brand protection. Improper advice in one area will adversely impact another, sometimes permanently. As we guide business owners in their quest to build a strong brand this law of cause and effect will be become clear.

Has your anxiety level risen while reading this post? Take some PROZAC®. It is still a trademark and not generic, but a brand!

Are you ready for more? Fill a "Thermos" with "Cola" and Ride a "Hog" up an "Escalator" for some "Primal Therapy."

Copyright 2008 Hodgson Law Group

Cheryl L. Hodgson, J.D.

View XEROX TM: http://brandaideblog.com

Visit us online: http://www.hodgson-law.com

The Intersection Where Trademark Selection Meets Protection

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Trademark International Class: Class 9 (Electrical and Scientific Apparatus)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Let's take a closer look at one of these trademark classes - class 9.

What is International Class 9 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 9's short title is electrical and scientific apparatus. But, as with anything trademark, there's more to it than that.

This class encompasses nearly any tangible goods that are scientific, nautical, surveying, electric, photographic, cinematographer, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

PHEW! Let's break that down a bit. Here are some of the more often used descriptions for International Class 9:

Software and video games of all kinds including what used to be considered a service - providing online video games.

Video games, which also include the peripherals such as joysticks, players, interactive floor pads and interactive remote controls.

CDs, DVDs, audiocassettes, records, whether blank or filled with content, as well as the devices used to play them.

Computer peripherals such as mice, keyboards, printers, and monitors as well as virtually any good related to the telephone, the television or the camera.

The USPTO has 3145 accepted descriptions that fit into IC 9; check them out here.

What Else is in International Class 9?

Seems like with any of these trademark classes, there always seems to be the oddball item or two and IC 9 is no exception. Here are a few items living in IC 9 that seem to be a weird fit:

• sun glasses, eye glasses and pince-nez
• protective clothing
• dog whistles
• helmets

What's New for International Class 9?

The classification guide is constantly being updated with new goods or services. As the marketplace changes, the trademark office must adapt. Here are some of the 2009 listings for international class 9, good plus date added to the guide:

• Graduated rulers for office and stationery 25 Jun 09
• Hands free devices for mobile-phones 18 Jun 09
• Holders for magnetically encoded gift cards 02 Apr 09
• Life vests 26 Mar 09
• Articles of protective clothing for wear by motorcyclists for protection against accident or injury 5 Feb 09
• Digital music system that synchronizes digital music files stored on a home unit and a car unit 15 Jan 09

Shannon Moore is the General Manager for TradeMark Express. Since 1992, TradeMark Express has met the needs of their clients with comprehensive research, application preparation, attorney referrals and trademark consultation. For further details, please visit us on the web at TradeMark Express or call Shannon directly at 800.340.2010.

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Trademark Law India

Trade Mark means a registered trade mark or a mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use the mark; and a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark.(See Section 2(v) of the Trade and Merchandise Marks Act, 1958)

In other words, a trade mark is a visual symbol in the form of a word, a device, or a label applied to articles of commerce with a view to indicate to the purchasing public that they are the goods manufactured or otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt in by other persons. A person who sells his goods under a particular trade mark acquires a sort of limited exclusive right to use of the mark in relation to those goods. Such a right acquired by use is recognized as a form of property in the trade mark, and protected under common law. A person can also acquire a similar right over a trade mark, not so far used but only proposed to be used, by registering it under the Trade and Merchandise Marks Act, 1958. The law of trade marks is based mainly on two concepts ; distinctiveness and deceptive similarity.

Function of Trade Mark

The function of a trade mark is to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods, to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market. It tells the person who is about to buy that what is presented to him is either what he has known before under the similar name as coming from a source with which he is acquainted, or that it is what he has heard of before as coming from that similar source. It gives the purchaser a satisfactory assurance of the mark and quality of the article he is buying, the particular quality being not discernible by the eye. It is on the faith of the mark being genuine and representing a quality equal to that which he has previously found a mark may be used to indicate not only that the goods are of a particular maker but are goods of that maker of a particular kind or quality. Thus a trader may indicate his best quality by one trade mark, his second quality by another trade mark and so on.

Under modern business conditions a trade mark performs four functions:

(1) it identifies the product and its origin,

(2) it guarantees its unchanged quality,

(3) it advertises the product, and

(4) it creates an image for the product.

Object of Protecting Trade Mark

With the immense growth in the scale of business, and the advertising that accompanies it, modern customers rarely have that personal knowledge of suppliers which is the hallmark of a village economy. Even so, their interest in source of supply has not in essence changed. Information about origin is only a means towards an end : their main concern is in the quality of what they are buying. In the case of some goods, part of that quality may be bound up with source in a specific way : as for instance, when the goods will need servicing and the manufacturer or supplier is looked to for the services. But in a great may cases source, particularly when indicated by a Cypher such as a product mark or get-up, does not have even this significance. What it does is to enable the purchaser to link goods or services to a range of personal expectations about quality which derive from previous dealings, recommendations of others, attractive advertising and so on. Nor should it be forgotten that, however persuasively the advertiser may seek to promote this sort of symbol, it retains a neutral character in one sense : once a consumer learns that he does not want particular goods, the mark, name or get-up becomes a significant warning signal.

A law protecting marks, names and get-up accordingly, seems unavoidable in a capitalist economy. In various aspects, however, these laws have tended to develop in a manner that may appear to confer power without responsibility. The trade mark owner acquires the all important right to stop imitations of his indication of source, but his own use is conditioned by few limitations of positive requirement. It is perfectly possible for the public to be taught that a box bearing a particular mark and get-up contains 500 gm. of chocolates and then, by discreet expansion of the packaging, to reduce that amount to 475 grams. (See Surya Roshni Ltd. v. Samana Steel Ltd., AIR 1997 Del 321, where plaintiff was held entitled to temporary injunction for protecting its trade mark).

Different forms of Protecting Trade Mark

If the mark is a registrable one the best way to protect it is by registration. Infringement of the mark can be easily established. If the infringing mark is identical and the goods covered by registration, the success in an action for infringement is almost certain unless the registration can be attacked on the ground of invalidity of registration or the defendant could established honest concurrent user, or acquiescence on the part of the registered proprietor, or prior user. If the marks are not identical but only similar then the plaintiff will have to establish that the defendants` mark is deceptively similar, that is to say, the similarity is such as to be likely to deceive or cause confusion which is a proposition not easy to establish. Ultimately the question of similarity is one for the judge to decide on which opinion may often differ.

In the case of unregistered marks and marks which are not registrable the only way they can be protected is by an action for passing off. The plaintiff will have to prove sufficient use of the mark so as to create valuable goodwill of the business connected with the goods bearing the mark.

Property in Trade Mark

Under common law a trader acquires a right of property in a distinctive trade mark merely by using it upon or in relation to some goods irrespective of the length of such user or the extent of his trade. As between two who are each desirous of adopting the same mark it is entirely a question of who gets there first.

Property in a trade mark which is only proposed to be used in relation to some goods can be obtained by registration of the mark under the Trade and Merchandise Marks Act, 1958.

There is no right to the exclusive ownership of a trade mark apart from its use or application of it in connection with some vendible commodity. In other words property in a trade mark does not exist in air.

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Trademark International Classes - Class 3 (Cosmetics and Cleaning Preparations)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Let's take a closer look at one of these trademark classes - class 3.

What is International Class 3 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 3's short title is cosmetics and cleaning preparations. But, as with anything trademark, there's more to it than that. The USPTO has 995 accepted descriptions that fit into IC 3.

Cosmetics of almost all kinds are to be listed in class 3. Now this includes cosmetics in the truest sense of the word (e.g. mascara, lipstick, etc.) but also includes lotions, creams, shampoo & conditioner, perfumes, etc. Basically any non-medicated liquid, creams, powder, gel, etc. that you can apply to your body is going to be in class 3. The one exception to the non-medicated rule is, for some reason, soaps. Soaps whether they're medicated or not fall into class 3. Cosmetic items for your animal friends - pet shampoos, pet odor removers - are also in class 3.

Cleaning preparations include soaps, be they for your body or your dishes, waxes, polishes, detergents, varnishes, removers, etc.

What Else is in International Class 3?

Seems like with any of these trademark classes, there always seems to be the oddball item or two and IC 3 is no exception. Here's a few items living in IC 3 that seem a bit weird:

• sandpaper
• ambergris
• beauty beverages
• fake blood
• temporary tattoo sprays & stencils

How do I file a Trademark in International Class 3?

Let's assume you've had your comprehensive research conducted and are now at the application stage. The folks preparing your application should help you with compiling a list but here are some guidelines that should help expedite the whole thing.

1) Be specific. For instance, if you're selling a wax indicate what it's used for - the face, body, a car, furniture, etc. If you're selling a line of cosmetics, take the time to really think on your brand and detail all of the items.

2) Stay away from words like products, items, materials, goods, etc.

3) Don't be specific. Whoa, what? Yes, I know this is contradictory and really this is one of those trademark classes that have contradictions in it. One of the USPTO's approved descriptions for this class is "Cosmetic preparations," which is general as general can be, right? This is where your research & any advice from a trademark attorney is going to come into handy. It may be advisable to use such a generic term to allow freedom of movement within your filing. Again, this is all going to depend on two things - the results of your comprehensive research and what a trademark attorney recommends.

Shannon Moore is the General Manager for TradeMark Express. Since 1992, TradeMark Express has met the needs of their clients with comprehensive research, application preparation, attorney referrals and trademark consultation. For further details, please visit us on the web at TradeMark Express or call Shannon directly at 800.340.2010.

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How Do I Trademark a Slogan?

First, it's not possible to copyright a slogan.

Copyrights can be obtained for things of an artistic nature. This includes, of course, poetry, films, sculptures, music, fiction, etc. But can also include things that may not necessarily seem "artistic" in the general sense of the word. Copyrights can also be obtained for advertising copy, games, software programs and blueprints, to name just a few.

It may be possible to file for a trademark for the slogan as long as it's used to indicate & identify the source of goods/services.

If we're talking about a merely informational slogan or a slogan that conveys advertising information, it's not eligible for trademark registration.

Let's take a look at what the USPTO says (and then what that actually means):

"Slogan or phrases used on items such as t-shirts...have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating source of the goods."

What that essentially means is that if your slogan is merely displayed on the goods themselves and is NOT identified as the source, then the USPTO will likely refuse registration. This is a tricky, gray area so seek advice should you have a slogan that you intend to use for products.

"Use of a...slogan to convey advertising or promotional information...is not service mark use."

The concept is similar to that for goods as described above. Basically, if your slogan describes your service and/or serves as advertising copy, it's not likely eligible for trademark registration. Again, this is a tricky, gray area so seek advice should you have a slogan that you intend to use for services.

After reading this it may seem impossible for any slogan to qualify for trademark protection but really that is not the case. It's all in how the slogan is used & presented. For example, both Nike's ® slogan Just Do It ® and McDonald's ® slogan I'm Lovin' It ® are Federally registered trademarks.

Shannon Moore is the General Manager for TradeMark Express. Since 1992, TradeMark Express has met the needs of their clients with comprehensive research, application preparation, attorney referrals and trademark consultation. For further details, please visit us on the web at TradeMark Express or call Shannon directly at 800.340.2010.

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