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.
Certification marks differ from trademarks and service marks, but they are protected against uses of identical or confusingly similar terms just like trademarks and service marks.
A pending lawsuit illustrates the importance of keeping your eyes open in selecting a new trademark, and also in monitoring applications by others to register identical or similar marks for competitive or related products, as well as looking for the use of such marks in the geographic areas of your existing sales or planned expansion.
In these turbulent times, brands are turning to cause marketing initiatives to assist charities. Before your company launches a campaign to help others, you should consider whether you are creating a legally regulated commercial co-venture (CCV).
A U.S. trademark application may be found to be void from the beginning if it is filed in the wrong name.