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What is Immoral or Scandalous Matter?

Some may think this is a very subjective definition, but I assure you, the USPTO sees it differently. Here is what they have to say about it:“Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to the registration of immoral or scandalous matter on either the Principal Register or the Supplemental Register.Although the words “immoral” and “scandalous” may have somewhat different connotations, case law has included immoral matter in the same category as scandalous matter.In affirming a refusal to register a mark as scandalous under §2(a), the Court of Customs and Patent Appeals noted dictionary entries that defined “scandalous” as, inter alia, shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation. McGinley, 660 F.2d at 486, 211 USPQ at 673 (mark comprising a photograph of a nude, reclining man and woman, kissing and embracing, for a “newsletter devoted to social and i…
Suggestive Marks


One of our amazing researchers, Heather Roberts, took some time to write this article, which I'm extremely thankful as time has been limited as of late. Heather wrote a few more great articles that I'll be sharing during the rest of the week. Thanks Heather!

The strength of a particular trademark is gauged according to the Distinctiveness & Descriptiveness Continuum. To see a chart, click here.

What is a Suggestive Mark?

Here’s what the USPTO says: “Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services...(SNO-RAKE held not merely descriptive of a snow-removal hand tool)...(QUIK-PRINT held merely descriptive of printing services)...(BUG MIST held merely descriptive of insecticide).

Suggestive marks, like fanci…
Arbitrary Trademarks


The strength of a particular trademark is gauged according to the Distinctiveness & Descriptiveness Continuum. To see a chart, click here.

Arbitrary marks are not as strong as fanciful marks but they are still strong in terms of trademarks. Choosing an arbitrary mark certainly makes the trademark filing process easier, provided, of course, that the mark is legally available.

What is an Arbitrary Mark?

Here’s what the USPTO says:

“Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services.”

This is an area that confuses folks a bit. I know that’s a question we get a lot – I can’t trademark a name that’s in the dictionary, right? Well, like anything with trademarks, it’s a gray area. If the product is apple juice then, no, the name APPLE cannot be filed for a trademark as it’s descriptive of the goods. …
Fanciful Trademarks


The strength of a particular trademark is gauged according to the Distinctiveness & Descriptiveness Continuum. To see a chart, click here.

On the very left of that continuum are fanciful marks, which arguably are the strongest sort of marks to file. Filing these types of marks increase the likelihood of trademark registration (provided, of course, that the mark is legally available).

What is a Fanciful Mark?

Here’s what the USPTO says:“Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, and EXXON) or are completely out of common usage (e.g., FLIVVER).”

Basically, fanciful trademarks are either made up words or words that are seen as archaic.

Should I Choose a Fanciful Mark?

While fanciful marks are certainly the strongest types of trademarks, does it necessarily mean you should choose a fanciful word for your se…
What a Tweeting Mess!

Back in August, I posted about Twitter filing for the mark Retweet. The USPTO has since sent Twitter's legal counsel an Office Action suspending Retweet's application based on prior filings. However, let's take a closer look at these filings & perhaps we can figure out where Retweet is going to end up - abandoned or a real, live Federal trademark.

Here's what the USPTO is telling Twitter:

"Although the examining attorney has searched the Office records and has found no similar registered marks which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), the examining attorney encloses information regarding pending Application Serial Nos. 77724346, 77802071, 77797006, 77697186, 77749897, 77746004, 77725866, 77701645, 77695071...

Action on this application will be suspended pending the disposition of these application upon the applicant’s response to the office action."

Wooo, that's a whole lot of sevens! Ok…
Trademarks for the Troops
A hearty THANK YOU from all of us at TradeMark Express to our troops.

Since it's Veteran's Day, I thought it'd be nifty to take a look at filed trademarks that are about the vets.

Hope for Veterans is owned by Community Hope and "is a transitional housing program...to provide a safe, supportive environment wherein former servicemen and women can start rebuilding their lives." Find out more about them here.

Recruit Veterans "is a service-disabled veteran owned and operated staffing and recruiting firm." Read more about them here.

Thank a Vet is a pending trademark for a clothing line. Buy the clothes here.
Trademarkia


Launched in September of this year, Trademarkia is a free, incredibly easy to use search engine that allows users to search the USPTO database of Federal trademarks, be they live or dead.

Two of my favorite features:

* Logo Themes: The USPTO does offer the capability to search logos on their site but it's a bit cumbersome. Here's an article about how one can do so. But Trademarkia's interface is much easier & really, it's just neat to browse through logos.

* Trademark Categories: aka Goods/Services Each classification is accounted for here & each has it's own snazzy design leading you into the International Classification. Once you're in a class, you can then look at Federal trademarks alphabetically.

Now it should be said that while Trademarkia is super snazzy, very easy to use & just overall cool looking -- this is a search of the Federal trademarks ONLY, meaning we're missing State trademarks & Common-Law databases.

Also another thi…
Distinctiveness & Descriptiveness Continuum


Here's a visual snapshot of the USPTO's Distinctiveness & Descriptiveness Continuum. Click to view a larger version. I hope it makes the PTO's guidelines a little clearer plus I like charts, graphs & whatnot :)

So far I've written about merely descriptive marks so I'll be sure to hit the other sections & re-post this visual with links to each new post.
Descriptive Trademarks

The title here is a bit misleading as descriptive words are not typically allowed to be registered on the USPTO’s trademark Principal Register. Let’s back up a little...

One of the main points (some would argue THE main point) of having a Federal trademark is to have exclusive rights to a name, a logo or a slogan within your industry. Given that, words that “merely describe” the goods or services are not going to be allowed.

There are two main reasons the USPTO provides:

1) “to prevent the owner of a mark from inhibiting competition in the sale of particular goods”

What this means: The owner of the descriptive word(s) can’t trademark it as it could create a stranglehold, of sorts, on the word(s) within the industry. For instance, the word “trademark” is disclaimed on our Federal trademark registration on TradeMark Express, meaning we’re not claiming exclusive rights to the word “trademark” as it’s a descriptive word for our industry.

2) “to maintain freedom of the pub…
Brainstorming Tips for Creating a Business Name


Here's a few things to keep in mind:

1) Keep your industry, your clients/customers, your advertising plan in mind.

2) The more unique & distinctive a name, the higher the chances that the name is legally available for use. And the higher the chances of obtaining the trademark.

3) Think of your business as having a personality. What kind of image do you want your business to portray?

Specific brainstorming tips:

Think about what you want but more importantly, think about what you DON'T want. If you don't want a 3-word name, don't bother with those. If you don't want non-English words, don't bother with those & so on and so forth.

What are the "types" of names you like? Think about words in their simple forms, e.g. adjectives, Latin roots, mythological names, etc. Compile a listing of the types & then seek out resources, such as books or sites, which specialize in those types.

- Mention our blog & …
Free Preliminary Trademark Search

TradeMark Express implemented a new service recently - ONE free preliminary USPTO search completed over the phone with you. We always conduct a preliminary USPTO search before we start comprehensive search but this new feature does NOT require that an order be placed first.

If you'd like your ONE free preliminary USPTO trademark search, contact me: shannon@tmexpress.com; Contact Page; 800.340.2010
Trademark International Class: Class 36 (Insurance and Financial Services)


All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 36.

What is International Class 36 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 36's short title is insurance and financial services. The USPTO has 724 accepted descriptions that fit into IC 36; check them out here.

Almost anything you can think of that’s in the insurance or financial fields is going to be in IC 36. This is going to include services like investing, appraising, banking or credit unions and real estate services that delve into finance (brokerage, listing, escrow, management).

What's New for International Class 36?

The classification guide is constantly being updated with new goods or …
Trademark International Class: Class 35 (Advertising and Business Services)
All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 35.

What is International Class 35 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 35's short title is advertising and business services. Pretty vague, eh? The USPTO has 1476 accepted descriptions that fit into IC 35; check them out here.

The first part of IC 35’s description, advertising, is straightforward. If it’s advertising, marketing or promoting services that are being offered, then IC 35 is where it goes. Now there are going to be some exceptions, as with anything related to trademarks.
Tangible advertising goods, such as signs, flyers, brochures, are NOT going to be in IC 35 as those items are n…
New McRuling

In Malaysia, local restauranteurs McCurry won an 8 year legal battle against McDonald's for the right to use the Mc- prefix. The McReign of McDonald's seems to be nearing an end as long as other restaurants serve food that is different enough from McDonald's so as not to confuse customers. Read the entire article here.This ruling will undoubtedly result in a McBurst of new restaurants.
Trademark International Class: Classes 32 & 33 (Light beverages; Wines and spirits)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at a group of these trademark classes – classes 32 & 33.

What are International Classes 32 & 33 All About?

These 2 classes represent the beverage classifications for trademarks. Class 32 is light beverages and has 182 possible descriptions; class 33 is wines and spirits & has 129 possible descriptions.

Almost any non-alcoholic beverage is in IC 32 except beer, which is in IC 32. This class includes waters, juices, sodas as well as syrups and essences used in making non-alcoholic beverages.

IC 33 is going to be any type of liquor, wine or spirit. Also included are syrups and essences using in making alcoholic beverages.

Geographical Indications for Wines & Spirits

Wines and spirits g…
Retweet This

Last Thursday, Twitter filed a Federal trademark application for RETWEET for three different classes. Take a look at the record here.

What does this mean for the 4.9 million uses found online? Does this mean Twitter's going to start sending out please-stop-using-our-trademark-as-a-verb letters a la Google?
Trademark International Class: Classes 29, 30 & 31
(Meats & processed foods; Staple Foods; Natural agricultural products)


All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at a group of these trademark classes – classes 29, 30 & 31.

What are International Classes 29, 30 & 31 All About?

These 3 classes represent the food classifications for trademarks. Class 29 is meats & processed foods and has 699 possible descriptions; class 30 is staple foods & has 900 possible descriptions; class 31 is natural agricultural products and has 345 possible descriptions.

Meats, poultry, seafood, game are, of course, going to be in IC 29. Also within that class are things like oils, frozen foods composed primarily of meat or fish, canned meats, fruits & vegetables. Nearly anything you'd find at the butcher or in most o…
Trademark International Class: Class 28 (Toys and sporting goods)



All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 28.

What is International Class 28 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 28's short title is toys and sporting goods. But, as with anything trademark, there's more to it than that. The USPTO has 1317 accepted descriptions that fit into IC 28; check them out here.

This class is fairly straightforward -- essentially almost any tangible item that's used in play or as part of a sport is going to be living here. This includes things like balls, bats, paddles, rackets, nets, poles, boards, pucks, sticks, clubs and on and on. Bags for specific sports are in this class, while all-purpose sporting bags a…
Gonna Keep Going


Looking over the blog's stats I can tell that all the different international classification posts have been fairly popular. Given that, I'm going to keep on keeping on.

I wanted to give my readers a quick summary of the different classes I'll cover as well as any respective issues.

If you see something missing or you have a question (or five) about classes, please comment below & I'll be sure to post about it.

Left off at IC 25, clothing -- any other questions or issues not yet resolved for anyone?

Will write posts about:
IC 28
ICs 29, 30, 31
ICs 32, 33
- geographically deceptively misdescriptive marks (say that three times fast)

Then it'll be time to move on to Services and I'm thinking it'd be a good idea to write a post for each class, from IC 35 to IC 45. As I go along, I'll address any other side issues that seem to come up when talking about these classes. Of course, feel free to ask questions galore in the comments section.

- Mention o…
The House of Mouse is at it Again

And boy have they been busy bees...or er, mice? Disney filed 10 applications on June 24th for Mickey By... for a whole mess of products: toys, clothing, textiles, linens, fabrics, housewares, furniture, pillows, photo frames, bags, backpacks, luggage, books, publications, printed materials, jewelry, audio & video recordings, video games, cosmetics, fragrances. PHEW!
Trademark International Class: Class 25 (Clothing)
All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 25.

What is International Class 25 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 25's short title is clothing. But, as with anything trademark, there's more to it than that. The USPTO has 887 accepted descriptions that fit into IC 25; check them out here.

IC 25 is pretty straightforward in that clothing of virtually any type you can think of is going to be here. The exceptions are clothing that's of a protective nature (e.g. bulletproof vests, clothing worn by motorcyclists for protection against injury), which, oddly enough, is in IC 9

How do I File in IC 25?

Filing in IC 25 is a bit different from other goods classes …
Trademark International Class: Class 20 (Furniture and articles not otherwise classified)

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Please see a complete chart here. Let's take a closer look at one of these trademark classes – class 20.

What is International Class 20 All About?

Each class has a short title heading that gives a snapshot of what that class is all about -- IC 20's short title is furniture and articles not otherwise classified. Well, that's vague. The USPTO has 894 accepted descriptions that fit into IC 20; check them out here.

Furniture of all sorts (excepting toy furniture) is in IC 20. This includes many of the related accessories for furniture such as shoe racks, curtain rings & rods, mattresses & pillows, etc. Also included is a long list of non-metal objects such as handles, hooks, bolts, latches, hinges, etc. If any of those items are made of me…