Quick Trademark Tip: Basic Searches for a Trademark on TESS

From time to time, potential clients call me with the idea of registering a trademark, and I ask them if they have first looked on TESS (the Trademark Electronic Search System). Some have never even heard of TESS. This post is a brief introduction.

[Note: This post was written while I was a practicing attorney running a solo law practice. Since April 2015, I have been working with attorney, executive and entrepreneur clients as a career coach and writer, and I am not currently available for legal engagements.]

TESS is the first stop for a trademark search, and to save yourself time and aggravation, you can check TESS before contacting a lawyer. This is also called a “knockout” search, since you can knock out names that would clearly present an issue if you tried to register your mark. If there is a clear conflict (i.e., likelihood of confusion) between your proposed mark and a registered mark, there is no reason to pursue the issue further. Back to the drawing board!

More specifically, TESS is the search engine to access the the U.S. Patent and Trademark Office (USPTO) database of registered and pending marks. You can start at www.uspto.gov, an easy entry point to remember, then click on >> trademarks. There you will find How-To Videos, FAQs and other information, as well as TESS and other links.

Once you have opened TESS, you have three search options. For new users, it is often helpful to use the basic word search. If you type in a word, you will pull up records that include that word. You will not, however, pull up other words that may sound the same but have a slightly different spelling. For example, you won’t find KOOL KIDS (two words) if searching for KOOLKIDS (one word). It’s a good idea to search for your mark in as many common variations as you can reasonably imagine.

In a simple TESS search, you also may not access all of the marks that could cause refusal of your registration on likelihood of confusion on other grounds. In other words, a TESS search is a first step to help you avoid some trees as you begin to predict whether a path can be cleared for your mark. After that, there are professional search firms that can help you along with a comprehensive search, which may be the next step in the process, in addition to trademark lawyers who can help you (if needed) interpret the results and (if advisable) continue to registration.

None of the information posted on this site constitutes legal advice or forms an attorney-client relationship, and there may be facts not discussed here that are relevant to your situation. This is a public forum. Please do not post confidential or fact-specific information regarding your legal questions on this site.

Five Scary Legal Blowups You Can Avoid in Your Business

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It’s Halloween. Kids get scared by monsters and spooky Jack O’Lanterns. Adults may relive pent-up fears from the rest of the year or (hopefully) get a playful reprieve.

Here are five scary legal blowups you can avoid in your business by careful, timely planning. Start tomorrow, after resting up from the Tricks and Treats.

[Note: This post was written while I was a practicing attorney running a solo law practice. Since April 2015, I have been working with attorney, executive and entrepreneur clients as a career coach and writer, and I am not currently available for legal engagements.]

1) You have an unstable or otherwise difficult business partner and do not have proper agreements. This seems like an obvious point, but unfortunately it is often overlooked. Document your rights and obligations with your business partners before disputes arise. If you visit Avvo.com or one of the other sites at which “real people” can post questions anonymously to attorneys, a topic you will see over and over again is how to dissolve a business relationship in which there are no legal agreements governing the relationship of the parties. A little investment upfront to work out what happens in a dispute will not only save you stress if there’s a meltdown or bombshell, or your business partner suddenly disappears or dies (which does happen), but it also will contribute to amicable relations in the good times.

2) You don’t know what your lease says. I am continuously surprised at how many friends and clients come to me with questions like – can I get out of my lease early without penalty? how do I do it? Your lease may be one of your biggest expenditures as a business. You should know what it says before you sign it, and you should write it down in a memo (or at least handwritten notes) that you file with the lease, so you remember later what it says. This goes for all big ticket contracts, in fact. Know not only how much they cost to stay in, but how much it would cost you to get out of them if needed.

5) Your address is wrong with the Secretary of State or contract counterparties  and you do not receive notice of fines or litigation. If you do not update your address, you will not be notified, and this is to your detriment. Fines and penalties can pile up, and if you do not receive notice of a litigation a default judgment can be entered against you without your knowledge or ability to defend yourself. Have an individual in your organization (and a backup) who is charged with reviewing key matters if your contact information changes temporarily or permanently.

4) You do not have a federal registration for your trademark or service mark, and someone applies for it first. If you have already invested considerable time in creating and advertising your business name and are operating in multiple states, or you have a serious intent to do so, it is worth the small investment to hire an attorney and, if he or she advises, file a federal trademark application. In the long run, it is more economical – and causes less headaches and heartaches – to either (1) have your registration completed first, without the need to try to cancel a competitor’s application on grounds that you are the prior, senior user, or (2) know before expending even further time and funds in a mark that registration may not be available. (See my prior post about choosing a mark and make sure that, if your attorney advises, you complete a trademark search as well.)

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5) You have “independent contractors” on the books who are really employees. Businesses often hire individuals as independent contractors or consultants without considering the serious downside if they are reclassified as employees. Take a look at the Department of Labor’s press releases about employee misclassification for some of the enforcement activity in this area. There is no single standard to distinguish between employee or independent contractor (e.g., click here re: the FLSA or here for the NY DOL). What is clear is that simply calling someone a consultant does not mean he or she is not an employee. And the penalties can haunt you longer than any ghost on Halloween.

Law Office of Anne Marie Segal is located in Stamford, Connecticut, provides legal counsel to businesses and individuals in Connecticut and New York and advises select national and international clients. Please visit www.amscounsel.com for more information.

None of the information posted on this site constitutes legal advice or forms an attorney-client relationship, and there may be facts not discussed here that are relevant to your situation. This is a public forum. Please do not post confidential or fact-specific information regarding your legal questions on this site.

What is the Supplemental Register for U.S. Federal Trademark and Service Mark Registration?

The Federal Trademark Register of the U.S. Patent and Trademark Office (USPTO) has two sections: the Principal Register and the Supplemental Register. The vast majority of the time, a trademark applicant applies for registration the Principal Register. The Supplemental Register is reserved for marks that are currently “nondistinctive” in the eyes of the USPTO (or its agents) and are capable of acquiring distinctiveness or “secondary meaning”.

[Note: This post was written while I was a practicing attorney running a solo law practice. Since April 2015, I have been working with attorney, executive and entrepreneur clients as a career coach and writer, and I am not currently available for legal engagements.]

What’s a “nondistinctive” mark?

Nondistinctive marks include descriptive marks, generic marks, “mere” surnames, geographic terms and nondistinctiveness, nonfunctional trade dress.

A “descriptive” mark is one that merely describes the good or service or, in the language of the Trademark Trials and Appeals Board (TTAB), “conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” Generic marks are the common names for goods and services. Think “desk” for a desk or “chair” for a chair. (See my prior post Not So Easy… for more information about descriptive and generic marks.) Geographical names are ones that are simply using geographic location as a mark. For example, if I decided to call my law practice: Stamford Law Firm. (Trade dress is topic for another post.)

Surnames (last names) may or may not be registrable, depending on factors such as how common the surname is and how it functions. I have friends whose surname is “Watson”, and I recently sent them this TTAB case with facts about using Watson as a trademark (in a particular case, in which the use was denied). Yes, this is the type of humor that lawyers and their unsuspecting friends find amusing! Obviously, there is a famous surname that is very common yet enjoyed a wide berth on the trademark registration front. Hint: it starts with “Mc”.

What is “secondary meaning”?

Secondary meaning is a way of acquiring “distinctiveness” for a mark over time. When a formerly non-distinctive mark becomes known to consumers as a source for particular goods or services due to the mark’s long and extensive use, it may acquire secondary meaning. Unfortunately, there is no hard and fast rule for when the mark actually acquires distinctiveness, but there is a presumption of secondary meaning after five years of substantially continuous and exclusive use of a mark in commerce. (Note: “commerce” is a term of art meaning interstate or international commerce, i.e. the commerce over which the federal government has jurisdiction.) There are a number of factors considered, including consumer perception of the mark, and evidence must be submitted to support the claim.

What protections does the Principal Register afford that are not available to a mark on the Supplemental Register?

The main protections available to a mark on the Principal Register that are not available on the Supplemental Register are the presumptions of validity, ownership and exclusive rights to use the mark. A supplemental registration also cannot be used to stop the importation of counterfeit products, and it cannot become incontestable.

What protections does the Supplemental Register afford?

All is not lost if you receive a letter from a USPTO Examining Attorney stating that your mark is not registrable on the Principal Register but may be registered on the Supplemental Register, if you do not or cannot persuade the examiner otherwise.

The Supplemental Register allows for the precious use of the ® symbol, which is for some the Holy Grail of federal trademark registration. It also blocks later-filed applications for confusingly similar marks on related goods and services, which means that no one can get a principal registration or supplemental registration for the same mark in the same class for which you already have a supplemental registration, preserving your place in line. With a supplemental registration, you can bring an infringement claim against third parties, although it is more difficult to prove than if the mark is on the Principal Register. Finally, with registration on the Supplemental Register, you can apply to register in countries that offer reciprocal registration rights with the U.S.

Note that there is also one advantage to supplemental registration over principal registration. If your mark is to be registered the Supplemental Register, there will be no need to publish the mark for third-party opposition, although a third party can later seek to cancel the registration. This may allow you to stay “under the radar screen” if your plan is to build up the name for acquired distinctiveness before would-be competitors catch on to your registration, since the Supplemental Register is checked less often than marks that are published for opposition.

Once on the Supplemental Register, can you amend to the Principal Register?

Unfortunately, you cannot. What you can do, however, is reapply to the Principal Register and show that the mark has, over time, acquired secondary meaning.

None of the information posted on this site constitutes legal advice or forms an attorney-client relationship, and there may be facts not discussed here that are relevant to your situation. 

Not so Easy: How to Choose a Name or Design for Your Future Trademark or Service Mark

Intending to name your business and obtain a federal trademark or service mark registration for the name? Just choose a name or design that reflects your passion, search the USPTO database to see that it’s free and (application in hand) you’re on the path to registration, right?

Not so fast. How easy it will be to register your mark depends on the name or design you have chosen and where it fits in the continuum below.

[Note: This post was written while I was a practicing attorney running a solo law practice. Since April 2015, I have been working with attorney, executive and entrepreneur clients as a career coach and writer, and I am not currently available for legal engagements.]

Fanciful/inherently distinctive marks. Fanciful marks are the best from a purely trademark (or service mark) perspective. These are made up words or inherently distinctive marks and are what is called prima facie registrable. This means the mark could be opposed by another party with superior rights but should not, if truly an invented name or mark, be initially rejected by the USPTO.

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Arbitrary marks. An arbitrary mark is a common word that is used in a new context, unrelated to the dictionary definition of the mark. Use of the word “Apple” for computers is a commonly cited example. There was no relation between the word for the fruit and the word for the computer before these were linked in a mark. Arbitrary marks are also generally eligible for registration.

Suggestive marks. Suggestive marks are often good choices, since they often make the most memorable names for businesses. However, although they are generally presumed to be entitled to trademark protection, they are less strong from a trademark perspective than fanciful or arbitrary marks. A suggestive mark tends to indicate the nature, quality or characteristic of a good or service but does not actually describe the characteristic. The consumer must make a “mental leap” to connect the mark with the good or service. The risk with suggestive marks, in some cases, is that what you as the business owner believe is suggestive, the USPTO examiner may believe is descriptive.

Descriptive marks. A term is descriptive if it “conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” Salty for a brand of crackers is an example of an immediate idea of the characteristic of the good. As I mentioned, some marks may walk the line between suggestive and descriptive, and if you choose a mark that could be either, you may need to convince the USPTO that your mark is actually suggestive not descriptive.

Generic marks. Generic marks are the common names for goods and services. Think “desk” for a desk or “chair” for a chair. These marks are not registrable. (Note that marks which may have been originally distinctive can become generic over time if they lose their distinctive character.)

If you are contemplating a business name, I suggest you consider the above points, whether or not you intend to immediately seek a federal trademark registration. Base your name on what works for you, but also make sure that after all the time and money you put into it, that you can protect it from others who may want to ride your coat tails! Fanciful and arbitrary marks are the easiest to trademark, followed by suggestive and not descriptive marks. On the other hand, suggestive marks are less costly to market, since by their nature consumers already have some association between the mark and the goods or services.

None of the information posted on this site constitutes legal advice or forms an attorney-client relationship, and there may be facts not discussed here that are relevant to your situation. 

Note that a USPTO search may not be sufficient for all proposed marks, and in many cases a more comprehensive search is recommended. Trademark matters are highly fact-sensitive. Please consult an attorney for more information about your proposed mark.

Aren’t Band-Aid [Brand Adhesive Bandages] Great? (My First Cut at Trademark Law)

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I got a cut on my ring finger the other day, trying to lift a heavy box of duraflame® logs into a cart at Fairway. (For the avoidance of doubt and preservation of amusement, that’s Fairway Like No Other Market (a.k.a. Fairway Como Ningún Otro Mercado), not the unrelated Fairway, maker of nonmetal gates, fences, etc.; Fairway Diva Golf.com; Fairway Independent Mortgage Corporation or even Fairway Wine & Spirits, the latter (like Fairway Like No Other Market and Fairway Como Ningún Otro Mercado) a trademark of the Fairway Group Acquisition Company and also a great place to shop.)

[Note: This post was written while I was a practicing attorney running a solo law practice. When published, it was one of my most popular posts. Since April 2015, I have been working with attorney, executive and entrepreneur clients as a career coach and writer, and I am not currently available for legal engagements.]

Ouch! Cardboard cuts are almost worse than paper cuts. I had to remove my wedding ring and replace it with a Band-Aid brand adhesive bandage. The Band-Aid brand adhesive bandage was borrowed – the kind of “borrowed” that you don’t ever return, that is – and it turned out to be an extra wide Sport Strip® Band-Aid brand adhesive bandage. (It didn’t have the new and improved QuiltVentTM technology like the ones in the picture below, but you get the idea.)

I can’t remember the last time I wore a Sport Strip® Band-Aid brand adhesive bandage, because nowadays with young kids I am accustomed to borrowing theirs (we should really buy stock in Johnson & Johnson, we use so many). The kids’ Band-Aid brand adhesive bandages, of course, have action or animated figures on them, so they’re cute but not as form-fitting. The Sport Strip® Band-Aid brand adhesive bandages were so comfortable, it almost made the whole thing worth it (but not quite)! I have to say, other adhesive bandages just do not compare.

Oh dear reader, lest you think I have turned into an advertisement for Band-Aid Brand Adhesive Bandages – There, for countless moments of caringTM – let me set the record straight! In fact, I took my first trademark (actually service mark) client recently, and I submitted the application to the USPTO today. Along with a very practical need to beef up on the area for reliability and depth – literally hundreds of hours of research and mentoring to get up to speed, which my legal-geek self found quite enjoyable – trademark law comes naturally to me, marrying my knowledge of general legal principles and art history training. I have had so much fun with it that I have been “talking trademarks” and “seeing trademarks” all over the place. I felt inspired to memorialize my giddiness with a blog post. (Also, tomorrow is my birthday, so according to my daughter I should be super, super happy today and only think of good things. She would understand my gush of Band-Aid brand adhesive bandage joy. When you’re six, they fix everything.)

Trademarks, service marks… I can no longer drive down a commercial strip in my town or open my cupboards without counting the marks I see along the way and pondering their origins. There are so many stories to tell through the trademark process. (Just take a gander on Wikipedia at the Johnson & Johnson page to get a glimpse into their little stake in trademark world. Did you know they trademarked the Red Cross symbol? And what happened to the mark after that?)

There’s an old phrase that when you are a hammer, you see nails everywhere. I am seeing trademarks everywhere, as well as lots of potential trademarks, if the owners decide take my or others’ advice that trademarking a name, logo or slogan is one of the most important and cost-effective protections to take for a business, assuming that it is available (by meeting USPTO requirements). So, all ® and TM fun aside, you will definitely hear more about trademarks in future posts on this blog!

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P.S. Since posting the above, a senior trademark attorney and mentor of mine kindly alluded to the fact that the trademark gods do not look kindly on witticisms tending toward genericide, even if used tongue-in-cheek. Please note for the record that neither Band-Aid nor any other name above is used in the generic. I really prefer Band-Aid to any other brand of adhesive bandage, duraflame to any other firelog and Fairway to any other market. You can quote me on that.

P.P.S. Further revisions above have replaced the ® after references to Band-Aid with the text in red and bracketed text in the headline, upon further suggestion from Boyd Tracy, former counsel to Kimberly-Clark Corporation. More comments about that in a later post.