Protecting Weak Online Trademarks

You're launching a new computer keyboard. You'd like to call it “101-Key Keyboard.” After all, the product is a U.S. standard with 101 keys. The name conveys the benefit of the keyboard ' that it is standard ' and the concise name will fit easily into your product catalog. You plan to register the name as a trademark with the U.S. Patent & Trademark Office (USPTO) so you can enforce your rights to the name against competitors who try to use the same name.

Solid plan? Not so fast. You've created what is known as a “weak” trademark ' one that will be difficult to register as a trademark and to defend in the marketplace. Creating a brand name that is trademark-worthy and can be defended in the market requires a thoughtful strategy. The standards of the USPTO for trademark registration are nuanced, and the wrong choice of words can make it challenging to obtain a defensible registered mark.

Trademark Basics

A trademark is a word, name, sound, symbol, device or combination thereof used consistently by a company to identify its goods and distinguish them from those manufactured or sold by others. Examples include Nike and Microsoft (words or names), the pink associated with Owens Corning insulation (color), and the NBC chimes (sound). Other trademarks include the Coca-Cola bottle (uniquely shaped container) and taglines, including “The real thing” of Coca-Cola, “Just do it” of Nike and State Farm's “Like a good neighbor.”

To register your trademark with the USPTO and receive the advantages that a federally registered trademark receives, the mark must pass the USPTO's examination. If you are successful, federal trademark registration provides you with a number of legal benefits, including: 1) evidence in court that you own the trademark, that the trademark is valid and that you have the right to use it; 2) constructive notice of your claim of ownership of the registered trademark and nationwide rights in the trademark; 3) the right to use the ' symbol whenever you choose to do so; and 4) the power of the USPTO to reject later-filed trademark applications that are considered confusingly similar to your federally registered trademark. Registering your trademark inhibits competitors from using marks too similar to your own.

Trademarks can be registered on what is called the USPTO's Principal Register, or on the lesser-used Supplemental Register. The Principal Register is reserved for trademarks that are considered to be most distinctive on their own and also includes those that have become demonstrably distinctive over time as a result of strong advertising and consumer recognition.

Trademarks on the Supplemental Register are typically less distinctive descriptive terms, surnames, geographic terms and marks used with visual elements (known as “trade dress”). As with the Principal Register, the Supplemental Register gives you the right to use the ' symbol as a defense against competitors, and the registration can be cited by USPTO examiners against Supplemental and Principal applications filed later by competitors.

Unlike the Principal Register, however, the Supplemental Register offers no presumption that your mark is valid, that you own it or that you have the exclusive right to use it. In addition, registration on the Supplemental Register cannot be used to block the importation of counterfeits. If your company faces competitive threats from overseas, a Principal Register trademark is best, because it will empower the U.S. Customs and Border Protection department to block counterfeit imports at their U.S. entry point.

Types of Trademarks