When Hanson's Bar, a homey dive in Robinson, N.D., registered "Geographical Center of North America," with the U.S. Patent and Trademark Office, the owners must have had little expectation that they would make headlines let alone open a Pandora's box of intellection property questions. The previous owners let the registration expire and Robinson's mayor, and the bar's owner, sensing a tourism opportunity snatched it up. But like most things in IP law, ownership is not so clear cut. The lawyers will argue, but the phrase's original owners have a strong case despite letting the registration lapse.

Registering a name, phrase or design (known in the business as a "mark") for trademark protection can be complicated, frustrating and costly. Knowing how the USPTO evaluates a submission can aid in creating, evaluating and ultimately selecting the mark and, crucially, save time and attorney fees.

The USPTO receives 60,000 submissions for trademark registration every year. Week in and week out 5,000 entrepreneurs and Fortune 500 firms alike request that a large and mostly faceless federal agency grant them the circle R that will help them transform their name into powerful and defensible brand.

Defense is the operable term; one is not required to register a new brand name but in the event of any infringement it is easier to defend the mark if it is registered. In other words, your mark is no more or less valid with USPTO registration but it is easier to protect if and when it is necessary.

Some Basics

A trademark is a word, phrase or design used to indicate the source of goods and to identify and distinguish it from another. Samsung, "Just Do It," and the Twitter bird logo are trademarks. Scents, colors, and sounds are also recognized as trademarks, though they may be a little harder to define and defend.

A trademark gives its owner exclusive rights to use the mark, and thus others are prohibited from using it or one that is deemed similar in sound, meaning or appearance. These rights can be acquired through USPTO registration and/or with use over time.

The Test

When evaluating submissions, USPTO applies a test that, though simple in theory, still manages to keep IP attorneys very busy in practice. The core premise of the test is the legal concept known as likelihood-of-confusion. As applied, the test question goes like this: what is the probability that a consumer would be confused as to the source or sponsorship of the goods or services? In layman's terms: upon seeing the brand name, might your average Joe or Josephine think that Widget X comes from Company B when in reality it comes from Company A.

But being a large government bureaucracy populated with learned IP professionals, it doesn't merely pop Widget X in front of a few randomly selected but representative focus groups and ask if they are confused. Instead, it applies a number of test factors that have been established by the courts when considering infringement issues.

Overall Impression

The first factor is a commonsense observation: does the mark (word, logo, phrase, scent, sound) look, sound, smell, or have meaning similar to another mark? For example, would a reasonable person confuse "Pizza Palace" with "Pete's Saw Palace?"

Goods and Services

IP law makes a distinction between categories of goods and services. Dove, for example can live happily as a chocolate bar and as a bar of soap. Apple Computers and Apple Records, originally agreeing not to invade each other's turf, peacefully coexisted until Steve Jobs decided to enter the music industry and kept a lot of lawyers very busy.

Goods and services is a particularly interesting factor as marketers increasingly recognize the value of their brand and expand it to other business. Consider the iconic Harley Davidson brand. Motorcycles of course, but the brand also graces restaurants, apparel and, at one point, eau de toilette.

Sales Channels

If the sales channels are different, there is less likelihood of confusion. It is hard to imagine a consumer confusing Comet scouring powder in the grocery store with the Mercury Comet car purchased at the Ford dealership.

Purchase Decision

Similar to sales channels, purchase decision test holds that the complexity of the purchase and the sophistication of the buyer can impact confusion. A product purchased by a nuclear physicist through a complicated process involving reams of paperwork and dozens of approvals is unlikely to be confused with a product purchased on impulse at check out.

Strength of Mark

Some types of names have a greater chance of clearance than others. The USPTO considers names along a continuum from fanciful (very strong) to generic (very weak). The stronger the name the greater the chance of registration.

Proximity

Proximity is relevant both within the sales channel; the household cleaner aisle versus the produce section, and across regions and countries. While geographic expansion needs to be factored in, it is relatively safe to say that the greater distance between the two marks the smaller the chance of confusion.

Creating a new brand name or slogan is challenging enough without the added frustration of IP issues. Understanding the factors that go into the Office's assessment can ease the process.

Published on: Jun 22, 2017