What examiners look for in your application
When examining your US trade mark application, the examiner will look at your application to determine whether it complies with all applicable rules and statutes, and includes all required fees. Some of the issues that the examiner will consider are set out below.
Similar to Australia’s Section 44 of the Trade Marks Act 1995, trade mark examiners in the US examine applications to determine whether a ‘likelihood of confusion’ may exist. Likelihood of confusion exists between trade marks when the marks are considered identical or similar and the goods and/or services for which they are used are also the same or similar so that consumers would mistakenly believe they come from the same source.
If two trade marks are found to be confusingly similar, but their goods and/or services are not the same or similar, the trade mark examiner may determine that there is no likelihood of confusion.
As with Australia’s Section 41 of the Trade Marks Act 1995, the USPTO must decide whether a trade mark is capable of distinguishing one trader’s goods or services from those of another trader. The USPTO refers to these as strong vs weak trade marks.
A strong trade mark is one that is commonly creative or unusual, so it is less likely that other parties would want to use them for related goods and services. Strong trade marks allow you to prevent third-party use of your trade mark. A weak trade mark is usually descriptive and others are already using it to describe their goods and/or services, making it difficult and costly to try to police and protect. Generally, trade marks fall into one of four categories:
- fanciful or arbitrary
- descriptive (avoid a term that is so highly descriptive it can never function as a trade mark)
- generic (not marks, but words that mean the thing, e.g., “soda” for a carbonated beverage)
Fanciful or arbitrary trade marks are easiest to protect because they are inherently distinctive. Fanciful marks are invented words with no dictionary or other known meaning, for example ‘KODAK’. Arbitrary marks are actual words with a known meaning that have no association/relationship with the goods protected, for example ‘APPLE’ for computers.
Suggestive trade marks are also considered strong trade marks, as they suggest, but do not actually describe, qualities or a connection to the goods or services being provided. For example, ‘GLANCE-A-DAY’ for calendars.
Descriptive marks are classified as weak trade marks until they have acquired distinctiveness (and some terms are so highly descriptive that they can never qualify as trade marks). Consumers need to see a trade mark and identify it as being a badge of origin, rather than something that indicates the kind, quality, quantity, intended purpose, geographic origin, or some other characteristic of the goods or services being offered.
The classic example of this is the trade mark ‘APPLE’. If you apply for the trade mark ‘APPLE’, and you are selling apples, the word ‘APPLE’ is not capable of distinguishing your goods. This is because other traders who are selling apples have a legitimate need to also use that word. Likewise, if your trade mark was a photo of an apple, other traders who are selling apples should be able to use a similar image in connection with their business.
However, if your trade mark is the word ‘APPLE’, or a picture of an ‘APPLE’, and you are selling computers, there is no legitimate need for other businesses who are selling computers to use that trade mark, and so it is capable of distinguishing your computers from those of other traders.
Generic words are the weakest type of trade mark and are not registrable or enforceable. Generic words are the common, everyday name for goods and services and everyone has the right to use such terms to refer to their goods and services. Therefore, they are not protectable.
The USPTO may refuse registration because your trade mark is:
- a common surname
- geographically descriptive of the origin of the goods or services
- scandalous or immoral
- a foreign term that translates to a descriptive or generic term
- a person’s name or likeness
- the title of a book or movie
- purely ornamental matter
While some of these refusals are an absolute bar to registration, others may be overcome by evidence under certain circumstances.