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A Business Owner?s Guide to Trademarks: Criteria for Registration on the Principal Register

By Stephanie Robinson

A trademark is the most valuable asset owned by many businesses. The design, features, source code, or formulation of a product or service may change regularly and even predictably. Without a concise representation of the source, history or reputation of that product or service ? as distilled to the mark used to brand it ? such changes would make it immeasurably difficult, if not impossible, for a business to maintain demand. Businesses with particularly successful products or services spend considerable amounts of time, effort and money establishing and protecting their associated trademarks, and for good reason. Business owners who fail to pay sufficient attention to the protection of their companies? marks face a number of what should be unacceptable risks, including the inability to register or use those marks at a future date, the dilution of the market?s recognition of their products or services, and, in some cases, legal fees and penalties arising from trademark claims made against them by other businesses. It is therefore important for all business owners to have an understanding of several basic principles of trademark law, including registration with the U.S. Patent & Trademark Office (USPTO), what constitutes improper use, and what remedies are available for infringement. After an application for trademark registration is filed, it is assigned to an examining attorney at the USPTO for review. That examining attorney is under an obligation to approve the mark for registration on the USPTO?s ?principal register? of trademarks unless it meets one of several disqualifying criteria. For many businesses, most of these criteria are not usually difficult to avoid, including the following: - The mark ?consists of or comprises immoral, deceptive, or scandalous matter.? - The mark disparages, brings into contempt or disrepute, or falsely suggests a connection with other persons, institutions, beliefs or national symbols. - Consists of or comprising the name, portrait or signature of a living person without that person?s consent or of any deceased U.S. President during the life and without the consent of that President?s spouse. However, other criteria can present more of a challenge. These include the following requirements: -The proposed mark must not be so similar to an already-registered mark that it would cause confusion, mistake or deception as to the origin of the product or service associated with the proposed mark. - The proposed mark must not be ?merely descriptive or deceptively misdescriptive? of the product or service with which it is associated. - The proposed mark must not be ?primarily merely a surname.? A search of the USPTO?s records can yield a surprising number of existing and pending trademarks that may be similar to a mark a business wants to register and protect. In addition, it is not uncommon for a business to want to register a mark that either is in whole or that contains elements descriptive of associated products or services. While many such descriptive marks may not be eligible for registration on the principal register, if, through a business? continuous and exclusive use, those marks have acquired ?secondary meaning? and become distinctive of the business? goods or services, a business may be able to secure registration with sufficient supporting documentation. In these cases especially, a knowledgeable trademark attorney can provide valuable assistance to help reduce the risk of delay or denial in applying for registration.

Full post as published by Business and Technology Law on January 28, 2008 (boomark / email).