Trademark Registration of Surnames

Under federal trademark law, it is not possible to get a federal trademark registration on a mark that would be considered primarily merely a surname, unless you can establish secondary meaning (also referred to as "acquired distinctiveness").  In layman terms, this means that you would have to establish that consumers in the marketplace now view your mark as a reference to your company, and not as a reference to your last name.  Unless you can satisfactorily prove that to the Trademark Office, you will be denied the full protection of federal law for your trademark.

How does the Trademark Office determine whether your mark is primarily merely a surname?  They look to several factors, including whether anyone connected to the trademark applicant has that surname, whether the mark is a common surname, whether the mark has any alternative definitions beyond the surname, and whether the mark has the "look and feel" of a surname.  

I should note that the whole purpose behind the prohibition against the registration of marks that are primarily merely surnames is to keep surnames available for people who want to use their own surnames as part of their business identity.  As always, you should always consult a competent trademark attorney before proceeding with a trademark registration.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com

Trademark Registration of Marks Containing Bad Words

Federal trademark law provides for an absolute bar to the trademark registration of immoral or scandalous matter. To be considered “scandalous,” a mark must be “shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable; … giving offense to the conscience or moral feelings; … [or] calling out for condemnation,” in the context of the marketplace as applied to goods or services described in the application. In re Mavety Media Group Ltd., 33 F.3d 1367, 1371, 31 USPQ2d 1923, 1925 (Fed. Cir. 1994); In re Wilcher Corp., 40 USPQ2d 1929, 1930 (TTAB 1996). Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, … and in the context of contemporary attitudes.” Id.

This basically means that if your trademark contains offensive or shocking language, then the Trademark Office will likely refuse to register your trademark. However, what the Trademark Office has deemed to be "immoral" or "scandalous" has varied greatly. For example, the terms "fuck" and "shit" are clear examples of scandalous matter--not because people today are necessarily shocked or offended by the use of such words, but because the terms are traditionally considered vulgar. If you look up the term "fuck" in Merriam-Webster's online dictionary, the entry itself specifies that the term is "usually obscene" and "usually vulgar." However, the word "bitch", although usually considered derogatory to women, is routinely accepted by the Trademark Office as part of a proposed trademark, the difference being that there are non-vulgar definitions of the word "bitch."

In selecting a trademark, it's important to keep in mind that immoral or scandalous matter is not protectible by federal trademark law. Consulting a dictionary will usually reveal whether a particular word is traditionally considered vulgar or obscene.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com

The USPTO's Free Online Trademark Search

You can conduct a very basic, very preliminary trademark search on the U.S. Patent & Trademark Office website (www.uspto.gov). A lot of clients call me up to tell me that they've already searched this online database, and that they did not find any conflicts with other trademarks. However, this free online search is usually not enough to clear a trademark for use and/or registration.

One of the biggest limitations to the free online search is that it will only display results that feature the words you typed into the search. For example, if you search for the term SPARKLE WATER, it will return all results with the terms SPARKLE WATER in them. However, it would not return a result for something like SPARKLING H2O, which would likely be confusingly similar to SPARKLE WATER. Therefore, the free online search is to be used only for the purpose of discovering identical federally registered trademarks, and not necessarily confusingly similar federally registered trademarks. As is well-settled, a proposed trademark need not be identical to a prior-existing trademark registration to be deemed confusingly similar.

Additionally, the free online search does not cover other trademark databases that should also be searched before proceeding to use a proposed trademark, namely, the state trademark databases of all the 50 states, and common law trademark databases (such as national business directories and internet domain names).

Accordingly, although the USPTO provides a free online trademark search feature on their website, it is highly recommended that you have a professional trademark search conducted on your behalf by a competent trademark attorney.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com

Trademark or Copyright?

Clients usually call me up and ask if they can "copyright a business name." In short, the answer is no. You cannot copyright a business name because that's not what copyright protects. Rather, a copyright protects a creative work, such as a painting, a drawing, or an architectural design. If you want to protect your business name, logo, slogan, or symbol, then you would have to get a trademark registration.

And while we're on the subject, I should note that you cannot "patent" a business name or logo either. Patents protection inventions.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com

Trademark Registration Symbols

A lot of clients call me to ask what the difference is between the three trademark symbols, namely, the ™ symbol, the ℠ symbol, and the ® symbol. Here's a brief explanation of when to appropriately use these symbols.

The ™ symbol (called the "trademark symbol") is used whenever you wish to claim trademark rights to a particular name that you're using in connection with the manufacture of goods or products. Use of this symbol is optional, and it does not require you to have any trademark applications or registrations for the trademark in question. I note, however, the use of the ™ does not give you any trademark rights that you don't already have.

The ℠ symbol (called the "service mark symbol") is used whenever you wish to claim service mark rights to a particular name that you're using in connection with the provision of services in the marketplace. Again, use of this symbol is optional, and there is no requirement that you have a trademark application or trademark registration for the name in question. Much like the ™ symbol, the ℠ symbol also does not give you any trademark or service mark rights that you don't already have.

Finally, the ® symbol (called the "trademark registration symbol") is used whenever you have acquired a federal trademark registration for your name or logo. Under federal law, you may not use this symbol unless you have a federal trademark registration. Like the other two trademark and service mark symbols, use of the trademark registration symbol is optional.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com

Trademark Registration & Corresponding Domain Names

If you own the trademark registration for a particular term or phrase, does that automatically give you the rights to the corresponding domain name?

Not necessarily. When you get a trademark registration, you are ordinarily given trademark rights within your industry. That is, if you are a software manufacturer with a trademark registration for the name PHILOSOPHY PROGRAMS, then you would have the exclusive right to use the name PHILOSOPHY PROGRAMS in connection with software and any kinds of related goods or services. Accordingly, if another company started using the name PHILOSOPHY PROGRAMS to market and sell their religious seminars, you probably would not be able to do anything about it since no one is likely to confuse religious seminars with computer software programs.

The same kind of logic applies to the ownership of domain names. If you have a trademark registration for PHILOSOPHY PROGRAMS for your software products, then you could potentially stop anyone from using PHILOSOPHYPROGRAMS.COM in connection with computer software goods or services. However, if someone owns PHILOSOPHYPROGRAMS.COM and is using it in connection with providing religious seminars, you'd likely be out of luck. The owner of the domain name would likely be able to keep the domain name, and they'd be able to continue using it to promote their religious seminars without any problems.

So in conclusion, if you own the trademark registration, you don't necessarily have any rights to the corresponding domain name. However, you could potentially assert rights to the domain name if, for example, someone else started using the domain name to promote similar kinds of goods/services to those that you're providing, provided that you attained trademark rights to the domain name before the other party's initial use.

These domain name issues can be complicated, and contacting a trademark attorney is usually best for specific legal advice about your case.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com

Trademark Registration with Intent-to-Use Applications

Clients often ask if it's possible to file a trademark application if they have not yet started doing business under the proposed trademark name. The answer is YES. You can file what's called an "intent-to-use" trademark application to begin securing your trademark rights even before you start doing business.

An intent-to-use trademark application is a federal trademark application in which the applicant states that it is not currently using the trademark in commerce as part of its business, but that it plans to do so in the near future. The applicant must have a bona-fide intention to begin using the trademark in commerce at the time of filing this type of trademark application.

If the U.S. Trademark Office approves the intent-to-use trademark application, and if no third-parties oppose the application during the 30-day opposition period, then the Trademark Office will issue a "Notice of Allowance," which basically requires the trademark applicant to prove within 6 months that it has begun to use the trademark in commerce since the date of filing. However, the applicant may request extensions of time to prove use for up to 2.5 years (although there are additional fees attached to each extension request). Once the necessary proof of use is filed and accepted by the Trademark Office, the Office will issue the trademark registration.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com

Trademark Registration of Common Words or Phrases

Clients oftentimes call me to ask if they can get a trademark registration on a "common word" or a "common phrase." The question itself is always asked with a doubtful tone, as if they already know the answer is "no." However, to their surprise, the answer is a resounding "YES!". Or at least in some cases it is.

One example that I like to give to clients is that of Apple Inc, the famous computer and software manufacturer. The word "apple" is a very common word, and yet Apple Inc. had no problem trademarking the term APPLE for computers and computer programs. Why was this allowed? Because the word "apple" is an arbitrary word when used in connection with the manufacture and sale of computers and computer programs. That is, there is nothing about computers or computer programs that relates to apples. Accordingly, the term APPLE is actually a pretty strong trademark, as is the case when you apply a completely arbitrary term (however common it may be) to promote your products or services.

The case would be much different if I wanted to get a trademark on the word APPLE in connection with the sale of apples (the fruit). In that case, the name APPLE would simply be a generic term for the type of goods being provided, namely, apples. Because of this, the Trademark Office would never issue a federal trademark registration for the term APPLE if the only goods being provided were fruit products.

Common words or phrases are therefore well within the scope of trademark protection, so long as the words or phrases in question are not generic for the types of good or services being provided under them. After all, how else would TIME (the magazine), SHELL (the energy giant), and CATERPILLAR (the equipment manufacturer) get their trademark registrations?

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes since 2007. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com

Trademarking a Domain Name

The Internet has allowed not only large corporations to earn a profit via the instant access of the web, but has helped thousands of small businesses to crop up and claim their share of the pie as well. With all of this competition in a wide open marketplace, how does one protect one's business from identity theft?

You've worked hard to establish a market, you don't want someone making a profit off of your name or identity. You want your customers to find you. One of the best ways of protecting your business identity online is by trademarking your domain name. Why go to the trouble of trademarking your domain name and what can a trademark registration do for you?

Trademarking a domain name offers you legal recourse against any entity that registers a similar domain name to yours. If someone steals your customers by utilizing a similar domain name to sell similar goods or services, you may have strong legal grounds to take their domain name away from them if you have a federal trademark registration for your business name.

How do most people find things online? They use a search engine. Search engines are easily manipulated using search engine optimization techniques, so it's not difficult for another entity to steer customers searching for you to a similarly named site. This can not only cost a business money, it can damage a reputation. What if your thieving competitor then rips off your client or gives them shabby goods or service, all while the client believes she is doing business with you? Trademarking your domain name can help mitigate such situations by providing you with federal rights to the exclusive use of your business name.

Trademarking your domain name offers the protection of legal recourse if someone tries to steal your business online. If they manage to fool your customers you can potentially seek damages in federal court to recoup losses, and you can potentially have the infringing domain name transferred to your ownership. Accordingly, if your company relies on the Internet for profit, trademarking your domain name could be one of the wisest business decisions of all.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com, focusing on trademark registration and domain name disputes. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com

Trademark Attorney or General Practitioner?

If you're a small business owner, you probably have some kind of legal counsel. In my experience, most small business owners have the benefit of a local attorney who helps them with the company formation process and general legal and contractual issues. However, most small business owners do not have a trademark attorney for the very simple reason that trademark attorneys are hard to come by in small or mid-sized communities.

The question then arises: "Do I really need a trademark attorney to handle my trademarking issues, or can my local attorney do it?" The answer to this question of course depends on the competency of your local attorney in the field of trademarks. Some general practitioners may have a particular expertise in intellectual property matters, in which case it might make sense to allow your local business attorney to handle your trademarks. However, in the vast majority of cases, the trademark registration process is not one with which your local attorney would be very familiar. Accordingly, it often makes sense to seek the counsel of a licensed trademark attorney before filing a trademark application.

One of the main advantages to having a trademark attorney on your side is the experience he or she has with the U.S. Patent & Trademark Office. A competent trademark lawyer will likely be able to spot potential problems with a proposed trademark right off the bat, sometimes even before conducting a trademark search. For example, if a client were to ask me to help them trademark the term "ROSENBERG" for a line of clothing, I would know to tell them that such a term would likely be rejected by the Trademark Office as being primarily merely a surname, and not an indicator of the source of the clothing. Somehow I doubt I would know this kind of information if I were a contracts lawyer.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes since 2007. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com

Trademark Registration: Search Before You Sell

As a trademark attorney, I get a lot of calls from clients who are interested in securing their trademark rights to a particular name they have chosen for their goods or services. I explain to them that the first step in the trademark registration process is to conduct a comprehensive trademark search for the name they have chosen in order to make sure that the name, or a similar version of the name, has not already been trademarked by others.

At this point, some clients balk at me, telling me that their name is unique, and that they are quite sure that no one else in the world is using that particular name. However, just because no else is using the same name does not mean that the proposed trademark is available for use and registration. In fact, the test for trademark infringement is not "identical" use of another's trademark, but rather "confusingly similar" use of another's trademark. Therefore, although the terms "ALLIGATOR" and "CROCODILE" are completely different words in terms of sound and spelling, they present very similar commercial impressions, such that they could be "confusingly similar" in meaning when used on similar goods or services in the same industry. For example, ALLIGATOR COSMETICS could be held to be confusingly similar to CROCODILE COSMETICS if both companies provided cosmetic products.

In order to avoid any headaches and further expenses in the future, a business should always have a comprehensive trademark search conducted by competent trademark counsel before proceeding to use the name in commerce, no matter how sure the business owner is that "no one else is using the name."

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes since 2007. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com

Trademark Registration of Descriptive Marks

Contrary to popular belief, not all trademarks are created equal. Some types of trademarks, such as those that consist of coined words or phrases, are traditionally considered to be the strongest kinds of trademarks since they are powerful indicators of the source of the goods or services being offered under them. Examples of strong trademarks include Google®, Kodak®, and Orbitz®, all of which are completely made up words that have nothing to do with search engine services, photography products, or travel arrangement services.

On the the other hand, trademarks which consist entirely of descriptive words or phrases are considered weak trademarks since they do not tend to identify any particular company. For example, the name "Boston Flower Shop" would be very descriptive because the name merely describes the purpose of the business: to sell flowers in Boston. And no doubt there are many Boston flower shops.

In order to get a trademark registration for a descriptive trademark, one would have to establish "acquired distinctiveness," which is just a fancy way of saying that people in the marketplace now see the mark as identifying a particular company or manufacturer, instead of the product or service itself. One way to established "acquired distinctiveness" is through 5 years' substantially exclusive use of the name in question. Therefore, if the "Boston Flower Shop" company has been in business with that name for at least 5 years, and if they are the only flower shop to be using that name, then getting a federal trademark registration could be well within reach.

As a side note, it is important to keep in mind that there are many successful companies which have thrived on their descriptive trade names, including Bank of America®, Coca-Cola® and New York Life Insurance Company®. Although these companies had merely descriptive trademarks initially, they were all eventually able to establish that their trademarks had acquired distinctiveness through long and substantially exclusive use of those names.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes since 2007. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com

Trademark Registration: What's the Purpose?

A lot of people call me to ask what the purpose is of getting a trademark registration. The answer is simple: The purpose of getting a federal trademark registration is to protect your company's name, brand, logo, and slogan from other people taking them and using them to promote their own goods and services.

Although getting a trademark registration is not absolutely necessary to do business or to attain trademark rights to a name or logo, it does provide the best and most comprehensive protection for any trademark. Without a federal trademark registration, the level of protection for your business is limited only to the geographical location in which you do business. Accordingly, if someone else starts a similar business with a similar name in another region of the U.S., you would have trouble getting them to stop using their name or logo if you don't have federal trademark rights.

And you can only get federal trademark rights by getting a federal trademark registration. So what are you waiting for, small-business-owner?

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.SecureYourTrademark.com focusing on Trademark Registration and domain name disputes since 2007. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com

Xavier Morales Named Top Trademark Attorney

The Corporation Service Company recently released the Q2-2007 edition of its Trademark Insider® report. A quarterly publication on the trademark industry, the report provides the general business and legal community with insight into overall trademark filing activity, a ranking of leading trademark law firms and companies, and an analysis of overall industry trends.

In this issue, Mr. Xavier Morales, owner of the Law Office of Xavier Morales, was ranked the No. 1 Trademark Attorney, having filed 177 trademark applications during the 2nd quarter of 2007--more than any other trademark attorney in the United States.

About the author:
Xavier Morales is the owner of the Law Office of Xavier Morales, http://www.secureyourtrademark.com focusing on Trademark Registration and domain name disputes since 2007. He can be reached at 1-866-618-2517 or by email: xm@secureyourtrademark.com