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Valid and Invalid Uses of Brand Names 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.


VALID MARK-Functions as a Mark

NOT VALID MARK-Does Not Function as a Mark

A brand name 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 brand name 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.

A brand name 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 brand name 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.)

The generic name of the class of goods or services should follow the brand name, such as Bond-Aid® Wetting Agent (for a registered trademark).

When a claimed brand name 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.

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-Dad Lure Co. v. Creme Lure Co., 143 USPQ 358 (TTAB 1964). Improper use of a federal registration symbol that is deliberate and intended to deceive or mislead the public is fraud. TMEP 906.02 Improper Use of Registration Symbol.


When a brand name/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.

The first time the brand name is used in text, a footnote may indicate the source of the brand name (who owns it and what goods or services are associated with the name).

The use of a brand name

in connection with advertising, promotion and preparatory activities for services to be available at some time in the future cannot support registration.


Background designs such as common geometrical shapes and borders are not distinctive uses of a mark.

Titles of single works are not registrable but a series of works may be.

Informational matter that is descriptive

Model or series numbers and grade designations

Names of artists and authors

Telephone numbers such as 1-800-555-NAME where merely adding numbers to a name does not make it distinctive (just as adding Inc. to a trade name does not make it distinctive).


Use In Commerce-for Registration

How trademarks or service marks are used in commerce by the mark owners makes a difference to obtaining trademark rights, whether the rights come from common law or registration. The origin of the right to use a mark comes from correct prior use, not registration. A trademark identifies and distinguishes a product, a service mark a service, and a trade name a business. These are completely different functions and the use in one does not cross over to the other. (See Function As A Mark for more information on the use of a trademark.)

Under the Lanham Act, “use in commerce” for goods is defined as: “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. . . . [A] mark shall be deemed to be in use in commerce . . . on goods when (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce . . .” Planetary Motion v. Techplosion, 261 F.3d 1188 (11th Cir., 2001).

While many use the words ‘trademark’ and ‘service mark’ to be interchangeable, this interchangeability should not be made when applying for a trademark or service mark with the USPTO. If you are applying for a trademark for goods, Section 45 of the Trademark Act requires use "on the goods or their containers or the displays associated therewith or on tags or labels affixed thereto."  15 U.S.C. §1127; see 37 C.F.R. §2.56(b)(1); TMEP §§904.04(b)-(c).   

Material that functions merely to tell prospective purchasers about the goods, or to promote the sale of the goods, are unacceptable to show trademark [goods] use.  Invoices, business cards, announcements, price lists, listings in trade directories, order forms, bills of lading, leaflets, brochures, publicity releases, advertising circulars and other printed advertising material, while normally acceptable for showing use in connection with services, generally are not acceptable specimens for showing trademark use in connection with goods.  See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §§904.04(b)-(c).  Correct specimen choice is vital to a trademark (or service mark) application or to common law use on goods or in connection with services.



Use In Commerce-for Common Law Rights

“Use in commerce” for common law rights under the Lanham Act is defined as: “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. . . . [A] mark shall be deemed to be in use in commerce . . . on goods when (A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce . . .” Planetary Motion v. Techplosion, 261 F.3d 1188 (11th Cir., 2001).

Even if a mark owner does not choose to claim the additional statutory rights that federal registration would bring, the right to protection must be established by the common law claiming plaintiff (person trying to prove infringement) in an infringement case. To establish use for common law right protection, a four factor test is used by the courts "to determine whether the market penetration of a trademark in an area is sufficient to warrant protection: (1) the volume of sales of the trademarked product; (2) the growth trends (both positive and negative) in the area; (3) the number of persons actually purchasing the product in relation to the potential number of customers; and (4) the amount of product advertising in the area." Lucent Information Mgmt v. Lucent Technologies, 186 F.3d 311 (3rd Cir., 1999) quoting Natural Footwear Ltd. v. Hart, Schaffner & Marx, 760 F.2d 1383, 1398-99 (3d Cir. 1985). In addition, for common law protection, use must be continuous. Alternatively, Federal registration of a trademark on the Principal Register is prima facie evidence of: the mark's validity, the registrant's ownership of the mark, and its exclusive right to use the mark in commerce.

Claims for trademark infringement for unregistered marks require findings that the unregistered marks owned by plaintiff are either inherently distinctive [rather than descriptive] or have acquired a secondary meaning and are likely to be confused with defendants' marks by members of the relevant public. Duncan Mcintosh Co. v. Newport Dunes Marina LLC, 324 F.Supp.2d 1083-1084 (C.D. Cal., 2004) quoting Int'l Jensen, 4 F.3d at 823; Vision Sports, 888 F.2d at 613; California Cooler, Inc. v. Loretto Winery, Ltd., 774 F.2d 1451, 1455 (9th Cir.1985).

In addition, an unregistered mark must actually have been used as a trademark 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).

In addition, a common law mark has geographically limited rights against a subsequent user under the Tea Rose/Rectanus doctrine -- the first user of a common law trademark may not oust a later user's good faith use of an infringing mark in a market where the first user's products or services are not sold. Nat'l Ass'n Healthcare Comm. v. Cent. Arkansas Agency, 257 F.3d at 735 (8th Cir., 2001) quoting United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 100-01 (1918); Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 415 (1916).

An inherently distinctive unregistered trademark has common law rights under U.S. & state Intellectual Property Rights (IPR) Law because many of the principles of the right to register for federal registration are the same for qualifying for common law protection. An unregistered mark does not, however, enjoy many of  statutory rights of federal registration that do not accrue from common law use. See Comparison of Principal Register v. Supplemental Register.



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