Part 1 of 6

Part 1: Trademark Priority and Trademark Distinctiveness

United States Trademark Law is unlike trademark law in foreign countries. Sometimes it can seem like federal trademark law is contrary to common sense. In this six part series, we look at some of the common issues that occur during a United States Patent and Trademark Office (USPTO) Federal Trademark Registration, some of which can be fatal to a pending application.

(1) Trademark Priority

While it may seem that trademark priority is simple to understand, a priority battle between two trademarks can be costly and complicated. First, U.S. trademark rights are based on use of a mark in commerce, not registration. In other words, the first person to obtain a federal registration of a trademark with the USPTO does not guarantee that owner an absolute priority or exclusivity over that mark. Under common law (law generated by judges instead of statutes) the date a trademark was first used in commerce has priority to use that mark in the geographic area the mark is being used. One of the biggest benefits in obtaining a USPTO trademark registration is that a federally registered trademark carries a presumption of nationwide priority of use, as of the date of filing a federal trademark application. Complications over priority battles typically arise when determining who has priority between two confusingly similar trademarks and one is a common law trademark, and the other is in the process of obtaining a federal trademark registration.

Say Bobby begins using a common law trademark on 1/1/15 in the Southeastern United States. Krystal files a federal trademark application with the USPTO, for a confusingly similar trademark on 2/1/15, which later becomes registered. At some point in the future, Bobby and Krystal get into a lawsuit of who has the right to use the trademark. Here, Bobby would have the exclusive right to use his mark in the Southeastern United States, but nowhere else, and Krystal would have priority over the mark in the rest of the U.S.

To change things a little, suppose Krystal files a federal trademark application on 2/1/15 which becomes registered a year later on 2/1/16. Between these two dates, Bobby begins to use a confusingly similar trademark only in the Southeast. When Krystal’s trademark application becomes a registration, her priority date becomes the date of FILING her federal application. In other words, Krystal has nationwide priority over use of her trademark, as of 2/1/15. At this point, Krystal has the right to prevent Bobby from using his confusingly similar trademark.

The above scenarios showcase the complexities that arise in a trademark priority battle. Whether an entrepreneur or business is attempting to determine the availability of a trademark, common law and federal statutes combine to control how far those trademark rights will extend.

(2) Trademark Distinctiveness

The scope of trademark rights is partly determined on the distinctiveness of a given trademark. The range/levels of distinctiveness is placed on a spectrum from weak to strong as follows: generic marks, descriptive marks, suggestive marks, and arbitrary/fanciful marks. Therefore, the initial key inquiry during the trademark selection process is to determine where the proposed trademark would fall on the spectrum of distinctiveness.

First, if a trademark is a generic mark, it will never be afforded trademark protection. Generic marks identify the actual name/category of the goods or services used in connection with the generic mark. An example is attempting to trademark the term APPLE for your home gown apples.

Second, if a mark is descriptive, they have the opportunity to register as a federal trademark with one caveat; they must obtain secondary meaning in order to become registered. This is because a descriptive mark immediately describes or identifies a quality, character, function, or feature of the goods/services provided with the trademark, and thus, the trademark does not initially function as an identifier of the source of a mark (which is a requirement for trademark protection). For example, attempting to register VISION CENTER for a vision/eyeglass store, this would be considered a descriptive trademark.

Third, a suggestive mark, which is similar to descriptive marks, suggests a quality, character, function, or feature of a trademark. This generally means that there must be some leap of imagination to associate the mark to the actual goods/services applied to the mark. For example, the mark PUBLIC EYE is suggestive for a tabloid publication. There are endless amounts of cases that analyze and debate whether a mark suggests or describes the goods/services associated with a trademark.

Finally, fanciful and arbitrary marks are the strongest marks on the spectrum. Fanciful trademarks are words that have no other meaning than acting as a trademark. In other words, a fanciful mark is a made up word. Examples include Kodak for a camera, Google for an Internet search engine, or Xerox for a copy machine. On the other hand, arbitrary marks are actual terms that have no association with the goods/services used in connection with the mark. One famous example is the mark Apple for computers or phones.

When starting a new business, brand, or product, it is vital to consider the spectrum of distinctiveness to ensure that your proposed brand or business name will be entitled to federal trademark registration.  Please contact our trademark attorneys to learn more about our federal trademark services.