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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