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My clients are often confused about what their options are if their trademark is deemed “merely” descriptive by the trademark examiner.

Key Point #1: “Merely” descriptive is a legal term of art.

One of the reasons your trademark application can be rejected is because the trademark is “merely” descriptive of the goods or services. This is a legal term of art (meaning good legal argument can sometimes avoid such a characterization), but a trademark is deemed to be merely descriptive when it describes an ingredient, quality, characteristic, function, feature, purpose or use of the goods or services that it functions as a trademark for.

Key Point #2: Legal strategies for avoiding this characterization.

Here are a few principles that help you avoid such a characterization, which prevents registration on the principal trademark register.

  • For a determination of whether something is merely descriptive, how you define the goods or services is very important (since this determination is dependent upon the identified goods or services, and is thus contextual – not abstract)
  • Combining descriptive terms to form a trademark will not typically help you avoid the descriptiveness problem
  • You can overcome this characterization by showing “secondary meaning”, i.e. usually that the trademark has been phentermine used long enough and/or has been associated with enough advertising ($$$) that you have a pretty compelling argument that the public perceives the trademark as associated with your product or service

Key Point #3: The supplemental register has benefits as well

And if you can’t win an argument that your trademark is distinctive, you can still register your trademark on something called the “Supplemental Register”, which is sort of like purgatory for trademarks. It has a few important benefits, namely:

  • You can use the ® symbol for the trademark
  • The registration is protected against later registration by another confusingly similar trademark
  • You can bring an action for trademark infringement in federal court (although you probably will not have a strong claim)
  • The registration affords easier international registration

So it is not all gloom and doom if your trademark gets rejected for descriptiveness, even though a federal trademark registration on the principal register is a lot more valuable than one on the supplemental register. Working with a skilled trademark lawyer – like me – can often make all the difference in this determination as well as what your brand strategy should be.

Rarely a week goes by that one of my trademark clients doesn’t ask me about strange letters or emails they get related to their trademarks. My inaugural blog post summarizes my thoughts on this correspondence.

Key Point #1: If you are my client, I am the only person you should ever have to pay for trademark work.

I usually incorporate filing fees into my fees – sometimes they are broken out in my invoices so you know what they are and sometimes not. While you shouldn’t rely on me for renewals (I have to say that), the odds are good that I will try to contact you about them. A million other peddlers of dubious services will also contact you – especially following a registration and when trademarks are up for renewal (following years five, nine and nineteen after registration, as it stands right now).

Key Point #2: Trademark scams are so prolific because your contact information and certain other information about your intellectual property becomes public information when you file for a trademark, and widespread confusion about the trademark process is fertile territory for scammers to exploit.

 

How do these scammers get your information? The federal trademark office publishes information about trademarks (and their owners) through the Official Gazette for Trademarks (OG), which comes out each Tuesday and contains bibliographic information and a representative drawing for each trademark published, along with a list of cancelled and renewed registrations. The OG is available via PDF for the most recent fifty-two issues. Information about each trademark (or applied for trademark) may also be found in the government’s comprehensive, searchable, public trademark database, which is updated daily and accessible directly from the home page of the trademark office web site.

As a result of the public nature of trademarks, when your attorney applies for a federal trademark, contact information must be provided that allows anybody (of particular interest, any enterprising scam artist) to contact you easily, armed with a lot of information about your brands and the knowledge that you have already paid some money to protect them.

Key Point #3: Trademark scams are always evolving and get more and more sophisticated, but there are some common types.

Scams arise via both snail mail and e-mail, as typically enough information will be available for either. Telephone scams are less common these days, but this is only because these scams seem to work better in writing.

Most of the “scammy” offers you will receive as a result of applying for or registering a federal trademark are in the grey area of not technically fraudulent.  A common example is the offer to be placed in some sort of alternate brand or domain or intellectual property registry. While there is nothing illegal per se about soliciting for a database or registry, these offers are often http://buytramadolbest.com/ marketed in such a way to mimic “official” registration of some sort by cloaking the offer with official sounding names and associating it with symbols such as an American flag and banking on your ignorance to pay up. They often looks like invoices as well.

In addition to these database-type scams, quasi-legal service providers that I will not dignify by naming will also contact you to try to lure you away from using a competent attorney to do your trademark work. They have also gotten better with their marketing efforts, and often market “review by an attorney”, but let me pose a hypothetical for you – do you think the attorneys who are good at this type of work would associate themselves with such a low grade service? Lawyers add value because legal problems are nuanced. Most of these services are basically slickly marketed, overpriced form filling services, in this grizzled lawyer’s opinion.

On to specific patterns of scams that are less of a grey area.

The most common form of scam I see these days hails from Asia, and usually originates via email.The narrative changes over time, but mostly revolves around a notice that someone in an Asia country (and I see this originate from many Asian countries) is buying up your domain names (yourtrademark.biz, yourtrademark.cn, etc.) and/or is attempting to register your trademark in various foreign countries. If you engage the scammer, you will often be asked to provide credit card information to purchase services to stop this behavior.

Don’t do it.

These inquiries could be phishing scams, where your credit card information is used illegally for other stuff. They could also be trademark extortion schemes, whereby engaging the scammers actually incentivizes them to buy some domains, only to sell them back to you at grossly inflated prices. Either way, I don’t see much upside to engaging anybody who wants to discuss your trademarks except for an attorney you trust. Are these ever legitimate legal issues? Maybe? I am not saying that there will never be a case where foreign shenanigans happen that exploit your trademark rights in a way that you should legitimately be paying a professional to help, but I don’t know if I would ever engage that likely huckster contacting you out of the blue.

The Final Takeaway

In my opinion, engaging a trusted trademark lawyer is pretty much the only sensible circumstance to pay money for something related to your registered trademark. Legitimate expenses and services include infringement letters, monitoring of competing trademarks, international trademark registrations, and trademark renewals. And good attorneys are not going to sell you stuff you don’t need, or confuse you.

Please let me know if this article was helpful and feel free to share your own trademark horror stories by contacting me at danny@veritrademark.com.