Trademarks
Fun Rogue Fact:
Monster Energy is one of the most litigious companies around. It usually works out for them, even when stretching the bounds of credulity. Until they argued that the two marks below are likely to be confused. The TTAB didn’t even have to consider if the marks are used to identify the same goods. Opposition 91269187.
But what is a trademark?
A trademark is anything capable of distinguishing the goods or services of one enterprise from all others. Trademarks date back at least to the third millennium BC, when artisans would stamp their "merchant’s mark" on products to authenticate their goods and to avoid confusion with others’ products. The term trademark can be used to reference a service mark or trade dress (see FAQs for more on these).
The purpose of a trademark is to protect the consumer. Nobody wants to be duped into buying Dr. Johnson’s Yellow Ointment made by the copycat, Mr. Bolton, instead of Dr. Johnson’s Yellow Ointment made by the Singleton family.
Trademark case law goes back a long time; in fact, the earliest known trademark legislation was the Bakers' Marking Law, which required every baker to put his mark on the bread he baked, enacted by the British Parliament in 1266.
Can there be a Rogue.law and a Rogue SUV?
Yes! Two identical or nearly identical marks can co-exist if it is unlikely the targeted consumers will be confused. We’re pretty sure nobody in their right mind would think Rogue.law is somehow associated with the manufacturer of the Rogue SUV, Nissan. Contact us for more details about trademark registration.
What makes a good trademark?
We can’t tell you what’s best for your business. But we can share Laura’s favorite approach to choosing a mark, as well as which marks are more likely to be granted protection by the US Patent & Trademark Office (USPTO).
Let’s consider how the USPTO groups trademarks, from worst to best.
The worst option is to pick a generic mark. It will be rejected every. Single. Time. So don’t bother. A generic mark is a word so commonly used for the product, there isn’t likely another word to describe it. Anybody know more than one or two words for those things that fly people across the ocean? And what about those machines that Mark, Bill, and Tim use to stalk your online presence?
Next are descriptive marks, which are nearly as bad. We receive inquiries nearly every day from clients who want to register a word or phrase that describes their products. We get it, descriptive words might help your ranking in Google or Bing. But descriptive marks are also almost always rejected, at least for the first five years, or more.
Now we have Laura’s favorite: Suggestive Marks. These are marks that “almost” hint at the product or service provided…like using the term Rogue.law to identify a law firm run by a solo attorney who uses unique approaches to her work. 😉 Suggestive marks require a jump in the mind of the target consumer. The trick here is to avoid falling into the pitfall of using a descriptive mark, as described above.
Arbitrary marks and fanciful marks will be allowed to register every time (unless another entity is using the same mark for nearly the same goods/services). The USPTO considers these strong marks, but what are they? Just like the names imply, an arbitrary mark is an arbitrary word associated with the product. Think Apple for computers. In contrast, a fanciful mark is a completely made-up word, like Rolex. The word didn’t exist before the watch. The USPTO loves arbitrary and fanciful marks.
Trademark Registration
As you can see, there are many nuances to consider when seeking a trademark registration, but we’ll walk you through each step. Email or call to schedule a (free) consultation.