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.


Not Just Patents® LLC

PO Box 18716, Minneapolis, MN 55418  

1-651-500-7590    

WP@NJP.legal


Aim Higher®

Facts Matter

Search Not Just Patents® sites:


StepsToABrand.com

Tie It Up

Securing the Right IP

Call 1-651-500-7590 or email WP@NJP.legal 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:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Patentability Evaluation

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

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

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions 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 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method 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 and TEAS plus  

How do I Know If Someone Has Filed for An 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 Trademark2e.com  

Likelihood of Confusion 2d

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   FilingforTrademark.com

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


©2008-2017 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us