USPTO- CONSIDERATIONS FOR REGISTRATION?
It is quite clear to all that the USPTO does not accept any and every mark for registration just because an application has been made. The proposed mark undergoes scrutiny in order to ensure that it is not conflicting with an already existing trademark and also to ensure that the mark is fit for registration. To get the desired protection, a mark must also be legally protectable.
Once the registration is obtained for a mark, the owner gets the exclusive right to use such a mark with the federal registration symbol ®. The protection granted to the mark by way of registration may then be utilised further to obtain registration in other foreign countries. Registration is an effective tool which empowers an owner to protect her mark and equips her with the capability to bring an action in the court of law in case of any infringement of the mark. However, it must be noted that the trademark rights granted by the USPTO registration are only applicable and available throughout the 50 U.S. states and territories.
POINTS TO KEEP IN MIND
· The proposed mark must not be such that it creates a confusion with another mark. If there is a “likelihood of confusion” of the proposed mark with the other mark which has been already registered or for which the registration application is pending, the USPTO may reject the application for registration filed at a later date.
Neither the mark nor the offered goods/ services must be deceptively similar to any mark registered or for which application is pending. The proposed mark must be such that it does not cause any confusion in the minds of consumers.
· The proposed mark should not be similar to other trademarks
· Always choose a mark that is strong instead of choosing weak marks with generic or descriptive terms. A very strong trademark is a fanciful trademark consisting of word(s) with no meaning of its own. An applicant must avoid using descriptive marks.
- The mark MILK proposed for “a dairy-based beverage” or for “milk products” would be considered to be generic by the USPTO and this in turn may result in rejection of the mark.
- Another example of mark which has high chances of rejection by the USPTO can be the mark ASPIRIN used for “pain relief medication”.
· A proposed trademark must not be an individual’s name or surname or family name. Such marks are liable for rejection.
· The proposed mark should not be mis-descriptive. It must not reflect wrong geographical/ any other source of the goods offered under the mark. For instance, “New York apples” as a proposed mark for a business of apples would be an improper trademark and thus, liable for rejection.
· The proposed mark must not be merely ornamental or decorative.
· It is advisable to hire services of expert legal professionals or attorneys for trademark selection and handling registration process in an effective manner. Prodigy Legal is a firm with substantial experience in the arena of trademarks, thus it provides you with a team of expert legal professional who assist you throughout the registration and selection process in a hassle-free manner.
About the Author
Isha Kapoor is a young lawyer with passion for law and dispute resolution along with a deep interest in human rights and Intellectual Property Rights. During her law school career, she has interned at the offices of advocates practicing at district courts of Delhi, High Courts and the Supreme Court of India. Along with this, she has interned at the National Human Rights Commission and also has to her credit, a paper published on the Rights of Muslim Women in India.