The Trademark Situation: Jersey Shore Star Suing A&F

Not too long ago the clothier Abercrombie & Fitch offered to pay the cast of MTV's Jersey Shore NOT to wear their clothes. Looks like one of the reality stars has found his fee - $4 million. Mike "The Situation" Sorrentino is looking for that dollar amount "in a complaint he's filed...that accuses Abercrombie of trademark infringement, unfair competition and false description."

Is The Situation on the money? Or is A&F in the right?

Filing a Trademark: Standard Characters vs Stylized/Logo

When filing a trademark, the USPTO gives you two options: Standard Characters or Specialized Form (Stylized and/or Design). Let's look at each one in detail and that should help you decide the best way to file for your mark.

As with any discussion about filing for a trademark, it is always assumed that you've done your due diligence and had comprehensive research conducted. That being said…

Standard Characters

This option is selected to register "word(s), letter(s), number(s), or any combination thereof, with no design element and when you are not claiming any particular font, style, size, or color, and absent any stylization or design element." In essence the USPTO is talking about plain text.

To qualify for this claim, the mark entered must fit within the standard character set. This includes letters and numbers but also some symbols, such as the ampersand (&), the dollar sign ($), the asterisk (*), etc.

To see the entire standard character set click here.

Special Form (Stylized and/or Design)

This option is selected to register marks that are "comprised of stylized word(s), letter(s), and or number(s), and/or a design element." For example, if your business name is shown in a certain font and that font is an important element to your overall brand, it might be a good idea to file it as such. This is also the selection you'll make if filing a logo/design. A logo can be filed on its own or with your name. If you're not sure if you should file your logo and name together or separate, read here.

Can you File for Both?

Technically, yes though not at the same time. Two separate applications (meaning double the fees) would have to be filed if you wanted to choose the standard characters and the special form.

Why Would I File for Both?

Most small business owners would not but as with anything in the trademark world it is going to depend on your overall plans for the brand. Let's say you have a name and a logo – easy enough, you use the special form. But let's assume that your name is going to be shown without the logo in a variety of fonts. Perhaps you have several product lines or your product line is geared towards different types of consumers and you have different font styles for each. Then it may be a good idea to also file the name as standard characters so as not to claim any one distinctive look to the mark but rather protect the name overall.

If you're not sure about how you should file, feel free to email me directly at Shannon@tmexpress.com.

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Trademark a Name and Logo: Together or Separate?

Trademarks can be names of products or services, logos, slogans, packaging and even sounds and smells. In essence, a trademark can be almost anything that is used to identify a particular product or service. Registering a trademark grants the owner exclusive rights to the mark within the specified industry. Of course, it's necessary to research the mark comprehensively prior to filing to ensure that there is no possibility of infringing upon another party.

Let's assume you've done your due diligence, had comprehensive research conducted and your name and logo are legally available. The next step is filing for a Federal trademark.

Now when it comes to filing, a big question is should the name and logo be filed together or separately?

This decision is going to depend on a number of circumstances, as with most things in the trademark world. Let's take some time to go through a few different scenarios:

1) Your comprehensive trademark research on the logo shows that it is legally available whereas the trademark research on the name shows a similar, not the same, name within a related, not the same, industry. Your trademark attorney may then advise you to file the name and logo together to ensure registration.

2) In showing your mark (e.g. advertising, web site, tags or labels, etc.), the logo is ALWAYS shown with the name but the name is sometimes shown without the logo. In this case, you may want to file two applications – the name and logo together AND the name alone.

3) The logo you're using is the crux of your brand and the name you're using is entirely descriptive of your goods/services. You may want to trademark your logo only OR trademark your logo alone AND trademark the name & logo together.

An important thing to keep in mind regardless of your particular situation is that whatever is filed with the USPTO is exactly how you should be using the mark. The USPTO wants to see your mark as you present it to your customers.

If you're not sure about your own name and logo, feel free to email me directly at Shannon@tmexpress.com.

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How many names should I trademark?

A common question we here at TradeMark Express get is should variations on a name also be filed for trademark registration. For example, if your business name is Fly RIght, should variations such as Flies Right, Fly Write, etc.* also be filed? Another example is the singular vs plural variations on a name.

Simply put, no, filing these variations are not necessary. Basically, you should file the name as you use it or as you intend to use it. One of the reasons behind registering a trademark is having exclusive rights to your mark within your industry.

Also, the USPTO requires that a specimen be filed in order to obtain trademark registration. The mark as displayed on the specimen must match exactly to the mark displayed on the application. Therefore, filing variations is pointless as you will not be able to prove to the USPTO that you are actively using those variations.

Now the 2nd part of that common question is - does that mean another party can file a variation on my name and receive registration? This question is a bit trickier to answer so let's go over a couple of scenarios to make things a bit clearer.

Example One:

You have a name for your clothing line called Love Letters* and you're not yet in business. You've done your due diligence and had comprehensive research conducted. After learning the name is clear, a trademark application is filed. A couple of weeks later, another company files for LuvLetterz* for clothing & they are also not yet in business. This would likely not go through for a couple of reasons - (1) the similarity in Sound, Appearance and Meaning is very strong between the two names, (2) the industry is common and (3) you filed first.

Example Two:

Let's use the same scenario as above in terms of your company name. Now let's say another company files for Letters of Love* for a line of stationery goods. As long as there are no pending or registered trademarks, the USPTO would likely allow this mark. The main reasoning is that the clothing and paper goods industry are dissimilar enough as not to cause customer confusion. In other words, someone looking for a t-shirt is not going to go to a stationery store and vice versa.

If you have an example you'd like me to analyze, please post a comment here.

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* No claim is made to the ownership, knowledge or liability of the above company names. The above examples are merely for informational purposes and should only be seen as such.