In choosing a mark or its form of display, do not mimic a distinctive famous mark. If your mark is likely to dilute the famous mark’s distinctiveness by blurring or tarnishment, you may be prevented from registering, or even using, your similar mark regardless of the purpose of your mark, the goods or services for which it is to be used, or a lack of likely confusion.
Tempting as it may be to adopt a trademark that is the common name for your product, that may not be the best idea because you cannot prevent others from using a word, or a combination of words, that consumers regard as a product name rather than as an indicator of its source.
The Swiss watch maker Wenger S.A. showed how close to the line you can come and still have protectable rights. It sought to register SWISS MILITARY, which it had used since 1989, as its trademark for “watches of Swiss origin.”
A phrase sometimes can be registered as a trademark even though it also conveys a message.
The U.S. Patent and Trademark Office (USPTO) rejects many applications to register a phrase as a trademark on the ground that the phrase fails to function as a trademark because it is merely informational or is a well-recognized and widely used concept or sentiment that would not be understood by the public to be a source indicator.
Note: Westlaw republished this article online in Westlaw Today on March 8, 2021 and in the March 24, 2021 issue of its printed magazine Westlaw Journal Intellectual Property.
Generally, a background design for a word trademark cannot be registered apart from the word mark unless the design is so intricate that it makes its own commercial impression as an inherently distinctive design.
Most background designs are common geometric shapes such as circles, squares, rectangles, triangles or ovals. Such a design fails to function as an indication of the source of the goods or services unless there is proof that the background design has acquired distinctiveness separate and apart from the word mark—known as acquiring a “secondary meaning.”
If you adopt a recognized or widely used concept or sentiment as your trademark, don’t expect to have the exclusive right to use it or to register it even if you use it in a traditional trademark manner.
Whether an ordinary purchaser would think so in the real world was not relevant to this trademark registrability analysis.
If you are thinking of registering a variation of a famous trademark for use as your own mark, think again.
A non-U.S. applicant seeking to register a mark in the U.S. without having used it in U.S. commerce normally should take affirmative steps to establish its bona fide intent to use its mark just like a domestic intent to use trademark applicant.
In selecting a word to use as a trademark, don’t assume you know what it will mean to all consumers.