Why Verify Trademark Strength Before Application?

To plan for a strong trademark application that will not be refused, can stand up to an opposition, and matures into a strong trademark registration.

Strong trademarks and their associated goodwill are valuable assets. A weak trademark may be subject to refusal, opposition, or cancellation or enforcement difficulty because trademark laws are not designed to protect weak marks.

Many different weaknesses and reasons for trademark refusals can exist in a trademark: that it is likelihood to cause confusion with another mark, cause mistake, or deceive; that the mark is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, primarily geographically deceptively misdescriptive; that the mark is primarily merely a surname; that the mark is a mere background design that does not function as a mark separate and apart from the words displayed thereon; that the mark is ornamental and has not become distinctive as an indication of the source of defendant's goods and others.

What is Trademark Goodwill?

    Trademark goodwill is not easily defined, but it has been described as the "expectation that the old customers will resort to the old place."  It typically includes not only the likelihood that customers will return to the old place of business, but the competitive advantage of an established business. "Although the definition of goodwill has taken different forms over the years, the shorthand description of good-will as `the expectancy of continued patronage,' provides a useful label with which to identify the total of all the imponderable qualities that attract customers to [a] business." "Good will has been defined as `the value attributable to a going concern apart from its physical assets — the intangible worth of buyer momentum emanating from the reputation and integrity earned by the company.'" Coca-Cola North America v. Crawley Juice, Inc. (E.D.NY 2011).

Five Step Verification by Not Just Patents® Legal Services

Can Your Trademark Stand Up?

Stand Up Trademark: A registration that protects legal rights and sets the ground work for a strong trademark registration protects investments in a product or service that can last through a long product life.

Fall-Down Trademark: A registration that only meets minimum requirements for filing (all the right blanks filled in and no direct search hits) may not ever issue or may not protect legal rights. The abandonment rate of trademark applications at the USPTO (trademarks that did not issue) is very high, there were 139,832 abandoned trademarks in 2012 (about 37%). Many applications do not meet federal trademark law because they have a likelihood of confusion with other registered or pending marks, are merely descriptive or generic, have specimens that do not show the trademark functioning as a trademark, have inadequate specimens of use and many other reasons. Many abandonments are from intent-to-use applications where the Alleged Amendment of Use (AAU) or the Statement of Use (SOU) were never filed with the USPTO or were not accepted (problems with specimens).   Getting a trademark registration does not have to be a gambling process.

Verify Strength to Stand Up: To verify a potential trademark is strong, available to use, and ready to register, Not Just Patents® Legal Services does  much more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, Not Just Patents recommends our service and starts the road to a Stand-Up Trademark with our Five-Step Verification process:

1. Verify Inherent Strength

Does the mark consist of inherently distinctive element(s) that can be claimed for exclusive use?

2. Verify Right to Use

Does the mark have a likelihood of confusion with prior marks (registered or unregistered)?

3. Verify Right to Register

Does the mark meet the USPTO rules of registration? (Does not have any grounds for refusal?)

4. Verify Specimen

Is the mark used as a trademark or service mark in the specimen?

5. Verify Goods and Services ID

Is the goods/services identification definite and accurate? Is the goods/service ID as broad as it should be under the circumstances or will a narrower description distinguish it better?

What is Verifying a Trademark and Why Verify a Trademark?

There are many different definitions for verifying a trademark. Some believe that it involves a mechanical quick search of USPTO records to look for direct hits. Some would expand the mechanical USPTO search to look for some ‘similar’ trademarks. Some would expand the search to include common law trademarks. If a trademark owner is just trying to spend little and get little, these may be enough to satisfy the “get little” goal. If a trademark owner is trying to maximize the value of their investment and minimize the weaknesses, A Strong Stand-Up Trademark Registration may be a better choice.

 “A strong trademark is one that is rarely used by parties other than the owner of the trademark, while a weak trademark is one that is often used by other parties. The more distinctive a trademark, the greater its strength.” Exxon Corporation v. Texas Motor Exchange of Houston, 628 F.2d 500, 504 (5th Cir.1980).

*The Most Efficient Commercial Tool Ever Devised: The International Trademark Association (INTA) in their Top Ten Reasons Why You Should Care About Trademarks calls a Trademark the Most Efficient Commercial Tool Ever Devised. A weak trademark is made up of words or symbols that others have a right to use so any one user has no exclusive rights to use.

*The USPTO helps to enforce  prior strong trademarks during the application of later-filed marks. A trademark examiner will refuse registration for later applying marks that have a likelihood of confusion with a prior registered mark or a prior pending trademark. A registered mark on the Principal Register has a presumption of distinctiveness or inherent distinctiveness. Even a mark on the Supplemental Register can be used to refuse a later-filed mark on the Principal Register. Being first to register has its privileges!

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Call 1-651-500-7590 or email WP@NJP.legal for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Steps to a Patent    How to Patent An Invention

Should I Get A Trademark or Patent?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Patentability Evaluation

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Name Cease and Desist

Sample Patent, Trademark & Copyright Inventory Forms

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

State & Federal Trade Secret Laws

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Shop Rights  What is a Small or Micro Entity?

Patent Drawings

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Converting Provisional to Nonprovisional Patent Application (or claiming benefit of)

Trademark Refusals    Does not Function as a Mark Refusals

How to Respond to Office Actions

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $199 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Patent search-New invention

Patent Search-Non-Obvious

Trademark Attorney for Overcoming Office Actions Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 Service of TTAB Documents  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

USPTO Search Method for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS and TEAS plus  

How do I Know If Someone Has Filed for An Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks Trademark2e.com  

Likelihood of Confusion 2d

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals   FilingforTrademark.com

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses

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Call: 1-651-500-7590 or email: WP@NJP.legal. This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us