Can the trademark symbol match the color of your logo or does it need to be black?

~ Lake Tahoe

Hi Lake Tahoe,

The purpose of either trademark symbol (either ® or ™) is to notify your competitor of your claim of trademark. Any choice of color should not interfere with this purpose. For more info, please review this article:

[http://lahserpatent.com/tm-symbol/](How to use the ® and ™ symbol)

Good luck with your trademark!

Related Posts

1. Could outlining a logo be trademark infringement?
2. Confusion with MLB and NBA logo?
3. How to use the ® and TM Symbol

Can the trademark symbol match the color of your logo or does it need to be black? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

When presenting an argument for trademark purposes such as Likelihood of confusion and descriptive goods/services, how should you open the argument on paper? For instance should you reference sub-title caption, paragraph no., and Serial and/or registration no.? and then present your argument for that particular subject? Obviously my main objective is to prove to the examining attorney that this trademark should be registered for reasons that will be set forth in the argument. What I am looking for is how to present the argument.

~ New Jersey

Form Follows Function: Be Persuasive

This is a legal proceeding. You must be persuasive: The best form is the persuasive form. The best question is the persuasive question. The best evidence is the persuasive evidence.

The arrangement and form of the argument greatly aids the persuasiveness. Think about it from the Examiner’s perspective. Their job is production oriented: grant or deny applications as quickly and correctly as possible. In other words, the Examiner gets a fixed amount of credit, and, seeks to limit the amount of time, on each application. The time spent examining an easy-to-allow trademark application is likely similar to the time spent on an hard-to-examine trademark application. So, present a scannable, understandable argument.

I am fairly certain that Trademark Examiners do not read everything that I write. Likely, they do not have enough time. I present fully-briefed arguments with significant amounts of evidence. When you interview the Examiner or when you listen to their oral argument on appeal, you can gauge their level of preparation. Use your time to minimize their time, and, you will get a better result. You want to format with your best points first. Make it as easy as possible for the Examiner to say yes, from the Examiner’s point of view. Do not be needlessly argumentative. Remember, the Examiner is not your adversary. The Examiner is serving a judge-like role.

There are very few requirements for the format of the response (especially if you file electronically, where most format is provided for you). So, focus on structuring the argument and presentation of evidence in the most persuasive way. Consistently use headlines, bold, italic, and typography to add a level of scalability and structure beyond the words you write.

Legal persuasion is both an art and a formula. I strongly recommend a little bit of self-help in legal persuasion. Brian Garner gives good, accessible advice on legal persuasion. Here is an example: “Never write a sentence that you couldn’t easily speak.” Personally, I read aloud any document that I am going to file, in part, to find awkward sentences that need to be recast.

And remember, everything you say will be used against you

One last point, anything you say to the trademark office will be used against you later. For example, your competition can attack or limit your trademark’s scope of protection if you are ever involved in a trademark lawsuit.

This is the reason why people hire trademark lawyers. The trademark lawyers investigate and discover evidence. Trademark lawyers research and find persuasive arguments supported by the evidence.

And, significant, trademark lawyers predict the efficacy of the argument: will it help more than it hurts, even over the long run. The trademark lawyer will think about how competitors might be able to argue in court latter, by estoppel. For example, competitor might later argue to a federal court: “To obtain the trademark, the trademark owner said ‘people will not be confused’; so, the court should decide that there is no confusion.” It is fairly persuasive, and, it can limit the enforcement power of your trademark in ways you might not foresee.

How to electronically file a Trademark Argument

To be fair, I would not suggest that you use paper. I would suggest that you respond electronically, because, the electronic filing system will likely prompt you for all of the requirements.

Electronic filing is straight-forward. Simple follow the series of screens. Read carefully. Use the help and explanations. Whenever you are confused, refer to the TMEP (Trademark Manual of Examining Procedure).

There are a few requirements for the response. These requirements are predominately explained in Chapter 300 of the TMEP. If you file electronically, you should review the following procedures:

• TMEP §301 Electronic Filing
• TMEP §302 Trademark Correspondence and Signature Requirements – In General
• TMEP §611.01(c) Signature of Documents Filed Electronically
• TMEP §807.05 et seq. Electronically Submitted Drawings
• TMEP §904.02(a) Electronically Filed Specimens
• TMEP §819 et seq. TEAS Plus

There are definitely further procedures that will apply to your situation, however, you will need to search to find those applicable to your situation.

Finally, be sure that you file the appropriate response in the appropriate system. The main systems are TEAS, ETAS, and ESTTA. TEAS is the Trademark Electronic Application System, which is generally used for trademark application filings and related communications. ETAS is the Electronic Trademark Assignment System, where you record title documents related to trademarks. ESTTA is the Electronic System for Trademark Trials and Appeals, where appeals, pleadings and other correspondence in trademark proceedings are filed.

Good luck.

Related Posts

1. Can I amend a trademark after rejection?
2. Can I trademark a version of the US Flag?
3. Trademark Office Action: How to respond

Trademark Response: How do you present argument? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

I have a recent trademark that came through on the supplemental register because the USPTO apparently understands the term to be descriptive. When I was filing the Trademark it was my understanding that I would be able to successfully defend my mark even though its not on the primary register.
However now that the mark is live I am finding that no attorney thinks I can successfully defend the mark, it would be a huge waste of money trying to, and that they do not understand how the USPTO approved the mark for even the supplemental register. I immediately called the attorney that handled my case with the USPTO and she assured me that they would not have approved it for the supplemental register if I would not have the ability to defend it.
So my question is what are my options if any?
Thanks in advance.
~ Duluth, GA

Yes. Why? The short answer is this: if you want the trademark, you need to create “acquired distinctiveness” by being the only person using the trademark with your goods or services.

Supplemental Register Trademarks need to acquire distinctiveness

Here is the long answer. Trademarks help the public, (for example, your consumer, your client, your future customer, or your prospect) to identify the goods and services that they want to buy or use. They have the right not to be confused and to obtain the level of quality that they associate with the trademark. Ok, so this is not how the law defines it, but, it is the result the law would like to achieve: no confused customers.

So, your supplemental register trademark will only function as a trademark if the public can use that trademark to distinguish your goods or services from that of your competitors. It is your job, as the trademark owner, to make that happen.

Trademark: What evidence support moving from Supplemental to Primary Register

When you agree with the Trademark Examiner and you acquiesce to registration on the Supplemental Register, you are practically admitting that the trademark, by itself, is not sufficient to distinguish your goods and services. You need to spend the time, energy and money so that the purchasing public mentally associates your trademark with your goods or services. There is no magic formula for this, but, here are some typical ways that it can happen, you likely will do all of them to a varying degree:

1. A long period of time goes by (usually five years) and your use of the mark is substantially exclusive (that is, no competitor uses the mark).
2. You spend significant amounts of time, energy or money on advertising and promotion of the trademark so that the public uses the mark to identify you as the source of the goods or services (and not a description of them).
3. You monitor the usage of the trademark and help educate the public and the press that this is a trademark (and not a description).
4. You solicit verified statements from your customers recognizing your trademark.
5. You conduct surveys, market research and consumer reactions studies.
6. You prevent your competitors from using the trademark through demand letters and appropriate legal action.

For more information on these kinds of evidence, see MPEP 1212 et seq.

When you take these actions, you are acquiring distinctiveness, that is, you are building up the secondary meaning of the supplemental register trademark as a source identifier, rather than a description of the good or service. When you take these actions, you will develop evidence that you can present to the Trademark Office to prove that your trademark is distinctive. At that time, the Trademark Office will move your mark to the Primary Register. Just how much you need to do, how difficult it will be, and how long it will take will depend on the specifics of your case.

If you do not want to spend the time, energy or money enforcing your supplemental register trademark to acquire distinctiveness, then, spend your effort to move to a new trademark that is “inherently distinctive” and get it registered on the primary Register.

Why do trademark attorneys have different opinions about the Trademark Supplemental Register?

Finally, I fully expect that trademark attorneys will differ in their opinion of your case. Why? Well, this is a matter of professional judgment. Some may see opportunity that others don’t, some may have read cases that others have not, and some may just be more intuitive. Personally, I love hard trademark cases like this. For small business, some creativity can go a long way, because, there is no “perfect” kind of evidence, that is, if you think of creative ways to associate your trademark with your goods in the mind’s eye of the public, the Trademark Office will consider it. Think: Guerrilla marketing, quasi-judicial legal action not in the courts, social media, Internet analytic information — these are all powerful, non-traditional sources of evidence that help show what the public is thinking.

Good luck!

Related Posts

1. How to Defend a Trademark Opposition brought by a Major Corporation
2. Trademark Office Action: How to respond

Can I defend a Supplemental Register Trademark? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

I have trouble determining the first-use date of the following hypothetical example electronic product, which has a case and a circuit board inside. Both the case and the circuit board have the trademark on them.
Day 1. The assembled circuit board was ready.
Day 2. I showed the circuit board to audiences at a public conference, telling them this product would be ready for sale soon.
Day 3. The case was ready.
Day 4. The product (circuit board assembled in the case) was ready. It is shown at another conference.
Day 5. I gave a unit to a friend to show to a potential customer.
Day 6. I put the datasheet of the product on a web site.
Which day would qualify as the first-use date? What specimen should I use, the picture of the circuit board or the case as part of the final product?

~ Maryland

I believe the answer is none of the above.

The first use date is almost always the same as the first use in commerce date. The first use in commerce date is the day that the product is sold in interstate commerce. This is an important detail, because, if you get it wrong your trademark may later be invalidated in court.

If you can identify the earliest date that you sold a product or service across state lines, this would likely be correct. However, a sale within a single state may still impact interstate commerce, and will likely qualify.

This becomes complicated quickly, for example, with services that are delivered for free over the Internet. The important part of identifying a first use date is identifying the related evidence, documentation, or proof. This evidence will likely be needed in any future litigation involving your trademark.

Related Posts

No related posts.

Trademark First Use Date: When is it? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

First, you are going to need to know whether or not this is a real Tiffany & Co. ring. It is possible that you may not be able to figure this out on your own. You may need an appraiser or another expert’s help if you don’t have the original sales paperwork.

Second, you should know that many companies with strong brands now “police” ebay to ensure that their goods are not being “faked” or counterfeited. These companies hire lawyers to create automated computer systems to search ebay to find goods that might be infringing on their client’s trademarks or counterfeiting their client’s goods. This may be what is happening to you. Remember the lawyers that sent you your letter may have very little information. These lawyers may seek to broadly enforce their client’s right, even with minimal information. In other words, you may get a letter like this, even when you have the real thing. Counterfeiting is a real problem on ebay. If you bought counterfeit goods there, you would not be happy, and companies are responsible for making sure others do not use their trademarks for counterfeiting.

What you will do will depend on many other factors. Where did the ring come from? Do you have your original purchase paperwork? Has ebay de-listed the item? How did you list the item on ebay? Does the ring actually resemble a Tiffany ring? There is no single correct way to respond to a letter like the one you received. Your response depends on what you have done and what you know.

If Tiffany & Co.’s lawyers sent you this demand letter and the ring is authentic, that would be exceptionally bad form. They should be very, very, very embarrassed for threatening their own customer with legal action.

You may wish to consult with your attorney to help you decide what actions to take next.

Related Posts

No related posts.

Counterfeit Tiffany Ring on eBay? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

Use of a comic book character name as a band name?? My band recently picked the name “Matches Malone” to go by. The name “Matches Malone” is a very minor DC comics character. After several online searches I can not find any sign that this name is trademarked. My band has started the processor making t-shirts and other products with this name printed on them. So I need to know if this is ok. Thanks, Dallas

I know how difficult it is to get a group of musicians to agree on a name. However, most bands should do two things. First, have an trademark attorney do a “trademark clearance” (which will include a professional search). Second, file for a trademark at the US Trademark Office.

This is going to add to the start-up cost for the band. It is going to take more than a couple of Gigs to pay for this. However, the name of the band is the most important asset (after your website). It is the way people will spread the word about your band. You will not know who is saying the name of your band, and, you will not be able to contact them should you need to change the name. For these reasons, bands really need to do a little extra, professional trademark work.

There is one other reason that most bands need to protect their name. Most bands become an “overnight success” in just three or four years. In other words, many bands now develop through online marketing in addition to live performances, over a period of time. The exception to this is when there is a real advertising budget, for example, when a band is recording for a label. When a label in involved, they clear the name of the band before the first t-shirt is ever printed.

So, a name-change for a band that is brought on by a trademark problem can be really devastating. It literally can destroy years of marketing work, and, it will most likely happen as you are finally getting the word out about your band. Literally, you will disappear from your local public’s eye as you are forced to change your name. In other words, as you get more successful, and your name gets around more, the more likely a senior trademark holder will complain about your use of your name (if it is improper or infringing.)

If your budget is really, really tight. You might consider self-filing a US Trademark application at the US Trademark Office. The filling fee can be as low as $275 for a single class. If you plan to do more than just live performances, I recommend two classes at double the cost. Then, you can protect both your live performances and sales of pre-recorded music, like CDs, DVDs, downloadable music, etc. A trademark registration that hangs around for five years or longer can become incontestable, if you submit the right affidavits at the right times. If you self file, take your time. Be sure to read the article about avoiding trademark mistakes.

Trademarks do not have to be registered. Trademarks spring from their use under the common law. Most comic book characters are protected as trademarks. It may not matter that you did not find a registration, DC Comics might complain later, much later. Trademarks protect people from becoming confused about who is providing them with stuff. If the public assumes there is some connection between your band and DC Comics, you will have trouble eventually. Even if the public does not make that assumption, DC Comics may still complain (rightfully).

If you are serious about this name, get some help from a trademark attorney. There could be other factors that might indicate that this name would be available.

Related Posts

No related posts.

Should you trademark your band name? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

1. any statements you submit to the Trademark Office may be later used against you;
2. the statements of the trademark examining attorney might be used against you if you do not present argument or evidence to clarify or rebut the examiner’s position;
3. if there is a “likelihood of confusion” with another trademark;
4. if the trademark may be “descriptive” or generic term for the stuff in your goods and services;
5. any other grounds for refusal, for example, formalities, trademark samples, ornamentation, geographic significance, deceptiveness, false connections, etc.;
6. what kind of evidence was presented by the trademark examiner;
7. what types of evidence are available to you to support your trademark;
8. what will be the impact of limiting or clarifying your trademark;
9. what relationship you have to any third-party who’s trademark may be mentioned in the office action; and
10. whether and how you should interview the trademark examiner.

In other words, when the Trademark Office refuses or rejects your trademark application, a miniature proceeding (just like a case in a court of law) begins. These proceedings usual have just one or two legal issues. Yet, they are formal. They are governed by a set of rules that has over 1360 pages and 19 chapters.  They create permanent, public records. The Government is represented by a successful, full-time trademark lawyer (the trademark examiner). The trademark examiner may be busy reviewing a minimum number of trademark applications each month. A trademark registration proceeding may take years to resolve. There may be options for finding a resolution and getting a trademark to register that are not suggested or known by the examining attorney. Hopefully, this article will help you to consider additional legal strategies to overcome the examiner’s rejection and allow your trademark to register.

By reading to the end of this article, you may better understand the legal strategies and tactics used to respond to a trademark office action or trademark rejection. This article is not legal advice, and, you should not rely solely on this article. Please consult your own attorney or primary legal sources, such as the Trademark Manual of Examining Procedure (link).

How trademarks protect consumers

Understanding how trademarks work is the foundation for a convincing, persausive argument to overcome the examiner’s trademark rejection. The primary issue in trademark law is “confusion”. That is, trademark law protects consumers from becoming confused about who is selling them stuff.

To say another way, you have applied for a trademark, but the law protects your customer so that your customer does not believe they are receiving your stuff when a competitor marks his stuff to look like your stuff. The law will also protect your potential customers.

Actual confusion occurs when your customer calls your competitor (or vice versa). Actual confusion should not be usually be an issue in a Trademark Office action proceeding. Instead, the Trademark Examiner will consider the “likelihood of confusion.” To determine the “likelihood of confusion” the trademark examiner pretends to be a reasonable consumer and discusses theoretically how this consumer might be confused between your trademark and those trademarks filed before yours.

Confusion always considers the trademark (the words, logo, design or other elements) and what is being sold (the “stuff”). Unless a mark is very famous, most consumers will not be confused by the same mark being sold for very different goods. So, “Zip” could be a brand for “fast food restaurant services” and “Zip” could be a brand for “medical equipment”, and there would be no likelihood of confusion. So, the legal term for stuff is “Goods and Services Description”, which is the legal definition for the boundary of the protection for your trademark. This works similar to a “metes and bounds” description for a parcel of land (real estate).

When your definition of “stuff” so resembles the commercial terms used to describe the stuff, the examiner may refuse registration. Consider registering a trademark for selling apples using the term “Apples”. If you had a trademark on the term “Apples” to sell apples, you could prevent all competition from using that word, so this type of usage is not allowed, because you would effectively prevent people from selling apples all together (this doesn’t help the consumer). However, “Apple” for selling computers, music, electronics, and so on, would be a fine trademark.

There may be other kinds of trademark rights, such as, common law rights, trade dress, unfair competition, and dilution. These rights should not be issues in a trademark proceeding.

How your statements to the Trademark Office may be later used against you.

When you respond to a trademark office action, you create a permanent, public record of your response. Since anything you write to the Examiner may convince that Trademark Office to register your trademark, a clever competitor’s lawyer may be able to use those statements later to narrow the protection or scope of your Goods and Services Description. This legal principal is called “estopple”. Estopple means that a court may deny your later statements or claims (for example, when enforcing your trademark rights against a competitor) that are contrary to the statements that you make to the Trademark Office to obtain the trademark registration.

When making argument to the Trademark Examiner, consider how a competitor might use that same argument to later limit the scope of your description of goods and services. Play devil’s advocate with your own evidence and arguments. Many times, multiple types of arguments and evidence are available, any of which may convince the examiner to allow the mark to register. Avoid arguments, if possible, that discuss how consumers do not become confused between your trademark and the trademark of another.

How statements of the Examining Attorney may be used against you.

Sometimes, the Examining Attorney may suggest an alternative description of goods and services, changes to your mark, or other amendments. While presenting this argument, the Examiner may make additional (and perhaps unnecessary) comments or arguments. If follow the Examiner’s suggestion without presenting corrective arguments or evidence, a clever lawyer may later argue that you acquiesced to the Examiner’s statement. You may not be able to present your arguments in a later proceeding where you are trying to enforce your trademark rights. If you have different reasons or a factual basis for accepting the changes presented by the examiner, you may wish to present your additional evidence or arguments, even when you follow the Examiner’s suggested course of action.

Responding to a “likelihood of confusion” trademark office action rejection.

If a consumer would be confused between two trademarks, then the later filed trademark may not register. To show confusion, the examiner must provide evidence or arguments to show:

• a similarity between the trademarks; and
• a relationship between the goods and services.

Generally, you will need to consider your trademark and the earlier-filed trademark presented by the examiner to determine the following:

1. Do the trademarks have the same or similar appearance, sound, meaning and commercial impression?
2. Are the “Goods and Services Descriptions” related?
3. Are there related, established, likely-to-continue channels of trade?
4. What are the conditions under which consumers buy? Impulse buying at a retail store? Commercial purchasing? How are sales made?
5. What other and how many trademarks are in use on similar goods purchased by consumer?
6. Is there a valid consent agreement between you and the owner of the previous trademark?

However, anything that tends to show that a consumer may or may not be confused may be submitted as evidence or argument. To overcome the Examiner’s refusal, you should present evidence (and not merely write back with an argument). Anything that helps to show that the consumer may not become confused may be submitted as evidence. For example, if the consumer is already distinguishing between many trademarks that are all similar, you may present the registration certificate of other marks that you wish the examiner to consider. For example, if you what to show the conditions under which consumers buy, you can present evidence of those conditions.

There may be special considerations for different types of evidence. When presenting listing from search engines, also include the pages that the search engine finds. Pay-per-click advertising statistics might be creatively used to show the relationship (or non-relationship) between goods and services. Yellow page advertising listings, state trademark databases, and other traditional trademark search tools can be good sources of evidence. Trade journals, newspaper articles, and other periodicals can be good examples of how trademarks are used, when available.  If the testimony of an expert needs to be submitted, then an affidavit may be required.

Using Consent Agreements to overcome “likelihood of confusion” rejections

Obtaining consent to register agreement may be unlikely, but, usually highly-persuasive method of overcoming the examiner’s rejection. To obtain consent to register agreement, you must contact (preferably through your attorney) the registrant of the previous mark and ask them to agree to allow you mark to register. There are a few risks to asking a prior trademark owner to agree to your registration:

1. The trademark owner will incur some legal expense to consider your consent agreement.
2. There is usually no advantage to the trademark owner to agree to the consent agreement.
3. If the trademark owner has plans to expand his products or services to include yours.
4. The trademark owner may now know about your trademark when they previously did not know. Some trademark owners aggressively pursue trademark policing and monitoring.

Yet, consent agreements can happen under appropriate circumstances. Generally, these are most useful when the Examiner presents evidence of a relationship between your trademark and another trademark, but, no real relationship exists. In other situations, there may be a real relationship between the owners of the trademarks.

How to respond to a generic or descriptiveness trademark rejection.

When the trademark examiner says that your trademark is “descriptive” or “generic”, the trademark examiner is refusing to allow registration because your selected trademark describes the “stuff” that you are provided with your trademark.

If the examiner claims that the mark is “generic”, you can only present evidence that the trademark is not generic. Dictionary definitions can show the generic means of terms. A significant quantity of evidence may be needed because you are trying to prove how the term is used (and that it is not the common term for the goods and services that you wish to provide with the mark). Overcoming “generic” refusals can be difficult. The more evidence that you can provide for how the term is used, the stronger the arguments that you can make. Consider newspapers, journal articles, or any other media that uses the term generically to show that the use of the trademark is not the same at the use of the goods and services.

If the examiner refuses because the mark is “descriptive”, you may also present evidence and arguments showing usage that. Additionally, you may amend to the supplemental register. The supplemental register (rather than the primary register) allows some trademark rights, including marking your trademark with the ® (pronounced “circle r”) symbol. The primary benefit of registration on the supplemental register is the presumption of acquired distinctiveness after five years of registration. After this time, the mark may be amended to the primary register.

Additionally, a trademark can overcome a “descriptiveness” refusal by presenting substantial evidence that the market has come to know your goods and services by this trademark. Usually survey evidence or significant showings of ongoing and sustained advertising across the country may be needed.

How to narrow, limit or clarify your Goods and Services description to overcome the Examiner’s trademark rejection.

For example, if you originally wrote your Goods and Services description to include “business consulting” and you consulted with business to help them become more environmentally friendly. If the examiner refused registration for a similar mark in “advertising services”, you might amend your Goods and Services Description to include “business consulting to promote environmentally friendly operations”, which further distinguishes the services offered by each trademark.

You cannot change your Trademark after filing

Because trademark rights begin as of the day of filing, changes to the trademark are not allowed. The filing provides notice to the public that you claim this trademark, so changes to the trademark are inherently unfair to the public.  Sometimes, minor changes are allowed, for example, to correct shading problems, to remove or add color to the mark, or to correct spacing issues caused by fonts. Changes such as these may be at the discretion of the examining trademark attorney

You may wish to interview with the Examining Trademark Attorney

The Examiner must grant you an interview to discuss the refusal of registration. You may wish to interview the Examiner if it appears that the trademark examiner misunderstood the nature of your goods of services or misunderstood some other aspect of your trademark application. Please keep in mind:

1. The trademark examining attorney is acting in an official capacity, just like as a judge. You may address them as “Examiner” or “Mr.” or “Ms.”, rather than by first name.
2. The interview is usually conducted by telephone by simply calling the examiner. Being polite is helpful and required.
3. Be prepared with your trademark and the serial number.
4. Have any questions or arguments prepared ahead of time.

Since interviews need not be recorded or transcribed, they may not directly become part of the permanent record of the file. The trademark examiner may make notations to the file or reference part of the discussion in a future office action.

Final Thoughts

The best responses to a refusal register a trademark includes arguments, backed by corroborating evidence that do not limit the goods and services description any more than required to obtain a registration. This article presents various approaches to finding arguments. This article will not substitute for the counsel of a trademark attorney that can identify the best and most creative arguments. This article does not consider the best ways to create a record that fully supports an appeal.

Related Posts

1. How to avoid mistakes when filing your US trademark.

Trademark Office Action: How to respond by Andrew P. Lahser, Patent Attorney and Trademark Lawyer