Copyright a Logo

When deciding to protect your logo or design it can be a bit confusing trying to decide how to protect it. After all, your logo is basically the face of your product line or your services so it makes sense that you'd want to do the right thing when it comes to ensuring that you have exclusive rights to it.

The question is should you copyright your logo or trademark your logo? The answer, surprisingly, may be both.

The US Copyright Office states "copyright protection may be available for logo artwork that contains sufficient authorship." What does this mean exactly?

Each logo or design is going to vary from the next in regard to being eligible for copyright protection, of course, but the key to understanding is learning what is meant by "sufficient authorship." Logos or designs that fall into any one of the two categories are not eligible for copyright protection:

• familiar symbols or designs, e.g. the peace sign, a single arrow, a Latin cross, etc.
• mere variations of typographic ornamentation, lettering or coloring, e.g. text in Times New Roman font, Text Using Only Sentence Case, text in purple

An even easier way to think about is to ask yourself one question about your logo – was there any creativity involved at all in designing the logo? If you're using a symbol you found in Microsoft Word or in a clip art program, then no. If you're using a logo you or someone else designed for you that contain a degree of creativity and/or uniqueness of some form or fashion, then yes. If you're not sure, feel free to email me directly at Shannon@tmexpress.com.

Even if your logo does qualify for copyright protection, do not assume it's the same as trademark protection. Copyrights and trademarks are fraternal twins – obviously related but look nothing alike. Copyrights protect the image itself whereas the trademark protects the image as it is used within the marketplace.

To protect your logo IN CONNECTION with your product line and/or services, a trademark is the way to go. The purpose of having a trademark, be it for a name, logo or slogan, is to obtain exclusive rights to the mark within your particular industry. This ensures that there will not be customer confusion when it comes to your goods/services and another within your industry.

Filing a trademark for a logo is similar to filing a trademark for a name. Comprehensive research is likely needed to ensure that the same or similar design is not already filed. I know what you're thinking – I know my logo is unique OR I paid for my logo to be designed so I know no one else has it – we hear that a lot. The one thing to always remember about trademarks is that the mark need not be exact to another. If there's a chance for customer confusion, it can be a problem.

If you'd like some help deciding if your logo should be searched and/or filed for a trademark, feel free to email me directly at Shannon@tmexpress.com.

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Recovery Project Logos Revealed

What do you guys think? What do you like? Dislike?

Specimens of Use for Trademarks

I’ve detailed the concept of specimens before but it’s a good idea to get into details about specimens as they apply to trademarks.

The simplest explanation is that the USPTO wants something that clearly shows the mark (i.e. the name, the name & logo, etc.) AND something that once read it is obvious that the mark is tied to the good.

In regard to trademarks, this can be accomplished several ways: "a label, tag, or container for the goods, or a display associated with the goods."

1) The Hanes clothing line has been in existence since 1901. One of the specimens they've provided for one of their many trademarks is a photograph of the tag printed on to their t-shirts. Check it out here.

2) Cover Girl is another well known American business, operating since 1958. One of the specimens they've provided over the years falls into the 'container' category, specifically the packaging lipstick comes in. You can see it here.

While there are only four ways mentioned in the USPTO's somewhat generic quote regarding acceptable specimens, there are several others that are within acceptable limits as well:

• Stampings, whether it be metal, rubber or inked on.

• Catalogs as long as it passes a three-fold test – a picture of the goods, shows the mark near the picture of the goods and provides ordering information, be it an order form, phone number, etc.

• An electronic display aka a web page. The same three-fold test that applies for catalogs is in play here.

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What is NOT a Trademark?

Now that we’ve determined what a trademark is, let’s get into more detail about what a trademark is not.

Here are just a couple of examples. If there's something that you're not sure can be protected by a trademark, shoot me a line: Shannon@tmexpress.com

1) Trade Name

It can be easy to confuse trademarks and trade names so let's get into some detail here. "The terms 'trade name' and 'commercial name' mean any name used by a person to identify his or her business or vocation," is the USPTO provided definition.

Now, a name can be both a trade name AND a trademark. The USPTO determines this based on the specimen.

Here are a couple of examples to illustrate this:

a) "It is our opinion that the foregoing material reflects use by applicant of the notation 'UNCLAIMED SALVAGE & FREIGHT CO.' merely as a commercial, business, or trade name serving to identify applicant as a viable business entity; and that this is or would be the general and likely impact of such use upon the average person encountering this material under normal circumstances and conditions surrounding the distribution thereof."

This means that Unclaimed Salvage & Freight Co. did not or could not show how that name was creating an impression outside of being just the name used to conduct their services.

b) "'LYTLE' is applied to the container for applicant’s goods in a style of lettering distinctly different from the other portion of the trade name and is of such nature and prominence that it creates a separate and independent impression."

This means that Lytle Engineering & Mfg. Co. provided a specimen that clearly showed Lytle, alone, as being unique and distinctive from their trade name, Lytle Engineering & Mfg. Co.

2) Ideas

When folks call asking how to protect their ideas, they're talking about this definition: "any conception existing in the mind as a result of mental understanding, awareness, or activity." This is worth noting because many people express confusion over the concept of ideas when it comes to intellectual property.

Let me provide a couple examples I've heard over the years.

a) "I've got this idea for a clothing line and want to protect it." Now clothing is clothing; there's really nothing new there. Yes, patterns can be unique from one designer to another. If that's the case, look into copyrights.

However, 9 times out of 10, what the person is really saying is that they have an idea based around a brand. This typically means they have a name & logo, which falls into the trademark category.

b) "I've got an idea for a new product." This as well as ideas to significantly improve an existing product is more than likely going to fall into the patent category.

Intangibilities cannot be protected but the various representations of your ideas may be protected be it with a patent, a trademark, a copyright or a combination of two or more.

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What is a Trademark?

While the USPTO does use the term trademark to denote businesses offering goods or services, there is a distinction between a trademark and a service mark. To be clear, there is no difference between trademarks or service marks when it comes to needing comprehensive research or filing a Federal application. All of that remains the same.

For the most part determining if you're offering goods or services is pretty simple. For instance, toys are a tangible good therefore Mattel® is technically a trademark while tax preparation is a service there H&R Block® is technically a service mark.

There are plenty of companies that have both. Nike®, for one, offers a line of branded goods as well as retail store services, therefore, they technically hold a service mark / trademark combination. Where folks get confused when it comes to trademarks is mistaking products or goods for services. Let's take a look at the USPTO's criteria for determining what is or isn't a trademark.

The term "trademark" includes any word, name, symbol, or device, or any combination thereof-

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Essentially, one can take this to mean that the owner of the trademark is either 1) CURRENTLY selling the product in association with the word, name, symbol or device in 2 or more states, OR 2) WILL, in the future, be selling the product in association with the word, name, symbol or device in 2 or more states.

This can be translated to: you must sell a product, displaying the word, name, symbol, or device, which is your UNIQUE product. For example, in the instance of clothing, you can not purchase a Hanes® tshirt and merely print a name across the front and call that your UNIQUE product. The USPTO would consider that shirt a product of Hanes® that you have merely made ornamental.

In the case of either trademark or service marks, keep in mind that merely displaying the symbol next to the word, name, symbol, or device does not create or denote any level of protection unless the application has been filed: "The presence of the letters 'SM' or 'TM' cannot transform an otherwise unregistrable designation into a mark."

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The Change Message

President Barack Obama's message of change has been a constant since he announced his candidacy on the steps of the Old State Capitol building in Springfield, IL. And on January 20, 2009 a huge change in the face of politics happened.

The President's theme has inspired folks all around the world. It's even made it's way into the world of trademarks.

A mere 2 days after the inauguration, 562 Media Inc., a marketing and design firm, filed for MakeAChange.org, which will be "a website that gives users the ability to make donations for charity"

And just yesterday, 3 more applications were filed using change as a central word in their marks.

Erasoul Enterprise filed for Embrace Change in 3 different classes, namely, the jewelry, houseware and clothing classes.

Dreams for Kids Inc, a children's charity, filed for We Are the Change, which is a youth leadership program.

Hubbell Inc, the international manufacturer, filed for CreateChange for "energy efficient lighting information services."

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Specimens of Use for Service Marks

I’ve detailed the concept of specimens before but it’s a good idea to get into details about specimens as they apply to service marks.

The simplest explanation is that the USPTO wants something that clearly shows the mark (i.e. the name, the name & logo, etc.) AND something that once read it is obvious what services are being offered. In regard to service marks, this is accomplished in one of two ways: advertising or performing. Okay, so advertising – that’s pretty easy to understand, right? Brochures, yellow page ads, flyers, billboards, etc. In terms of providing a specimen showing the mark “as used in the course of performing services,” examples are best to illustrate this concept.

1) Amazon.com provides online retail services for a large number of goods. They provided a screenshot of their home page. Check it out here.

2) Starbucks provides coffee shop services and provided a picture of one of their coffee shops as a specimen. You can see it here.

Now the USPTO says that letterhead, business cards or invoices are acceptable but there’s a strict rule that must be adhered to – there must be an obvious association between the mark and the services. To avoid the dreaded office action, we recommend that our clients find another specimen as the USPTO tends to be rather strict about this.

We get a lot of calls from entertainers/bands and technically they’re offering entertainment services (live musical performances to be exact). Now providing an advertising specimen is still fairly simple here – a flyer advertising a show will suffice. When it comes to providing a specimen in connection with performance, the USPTO will accept a photograph of the group or artist “in performance with the name displayed,” e.g. name on a banner above the stage, name printed on the drum, etc.

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What is NOT a Service Mark?

Now that we’ve determined what a service mark is, let’s get into more detail about what a service mark is not.

There are 5 examples the USPTO provides and it’s my guess that these are often filed for accidentally. I know at TradeMark Express we’ve received questions about all 5 of these “services.”

1) Contests and Promotional Activities

Now you’d think that contests and promotions are obviously services, right? It is a real activity and is done for the benefit of others. But it fails the 3rd test in that it’s not necessarily distinct from the primary services. Contests and promotions are typically just tools of advertising. There is an exception which is that if the contest or promotion goes “above and beyond what is normally expected of a manufacturer in the relevant industry.”

For example, “clothing manufacturer’s conducting women’s golf tournaments held to be a service, because it is not an activity normally expected in promoting the sale of women’s clothing.”

2) Warranty or Guarantee of Repair

These activities are merely ancillary to the primary service of repair, auto sales, etc. Again, there’s an exception to this rule. “A warranty that is offered or charged for separately from the goods, or is sufficiently above and beyond what is normally expected in the industry, may constitute a service.”

3) Publishing One’s Own Periodical

Now if you are publishing other parties’ periodicals that is considered to be a service. “Providing advertising space in one’s own periodical may be a registrable service, if the advertising activities are sufficiently separate from the applicant’s publishing activities.”

4) Soliciting Investors

Offering shares and publishing reports for shareholders are not separate services as these are routine corporate activities. Now investing funds for others is definitely a registrable service.

5) Informational Services Ancillary to the Sale of Goods

Providing information, instructions, details, etc. about your goods, the purpose of your goods, how to use your goods, etc. is not considered to be a separate service.

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What is a Service Mark?

While the USPTO does use the term trademark to denote businesses offering goods or services, there is a distinction between a trademark and a service mark. To be clear, there is no difference between trademarks or service marks when it comes to needing comprehensive research or filing a Federal application. All of that remains the same.

For the most part determining if you’re offering goods or services is pretty simple. For instance, toys are a tangible good therefore Mattel is technically a trademark while tax preparation is a service there H&R Block is technically a service mark. There are plenty of companies that have both. Nike, for one, offers a line of branded goods as well as retail store services.

Where folks get confused when it comes to service marks is mistaking ideas or concepts for services. Let’s take a look at the USPTO’s criteria for determining what is or isn’t a service mark.

1) Service must be a real activity.

The best way to explain this is to explain what is not considered to be a real activity – ideas, concepts, recipes, systems, processes, methods.

2) An activity must be primarily for the benefit of someone other than the applicant.

Who benefits from the activity/service? If it’s yourself or your company, you’re not offering a service in the technical sense of the word. If it’s for others, you are.

“While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others.”

3) Sufficiently distinct from activities involved in sale of goods or performance of other services.

This sounds complicated but it’s really not at all. Basically, whatever service is filed for must be distinctive from the primary activity. “For example, operating a grocery store is clearly a service. Bagging groceries for customers is not considered a separately registrable service, because this activity is normally provided to and expected by grocery store customers, and is, therefore, merely ancillary to the primary service.”

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Guess the Logos, part 2

Okay, so I think I made Friday's test a bit too hard. Let's try this again. Guesses go in the comments section.

The first person to guess all 7 receives $50 off of our Premium Package.

Guess the Logos

Here's a fun to-do for Friday. The following image is an amalgamation of six famous logos. Can you guess them all? Answer in the comments.

The first person to guess all 6 receives $50 off of our Premium Package!

14:59 and counting...

While I hesitate to add fuel to the fire that is the Joe the Plumber phenomenon, I figured since he's been in the news (again) this week that it'd be interesting to check out what's going on in the trademark world in terms of the name.

Back in 1996, the name Big Joe the Plumber was filed for plumbing services. The name has been in use since 1916 and is based out of Illinois.

Fast forward 12 years and we've got that phrase saturated into the 2008 political season. As with any pop culture/political phenom, there are folks looking to capitalize on it.

October 12th - Wurzelbacher asks Obama about his tax plan
October 15th - McCain uses the phrase "Joe the Plumber"

October 20th - the USPTO receives the first application for Meet Joe the Plumber
October 21st - two more applications come in, both for clothing
October 28th - three applications filed, 2 for plumbing services and 1 for chicken (I'm confused too). This is also the same day Wurzelbacher appeared at a McCain rally.
November 12th - after a small lull, another application was filed for plumbing services
January 2nd - the most recent filing (and likely not the last) is for clothing.

Now that Wurzelbacher is back in the news, we'll likely see even more filings. My vote for the next filing is for tax planning services. We'll see...

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.

Current Filing Fees at the USPTO

There's a number of forms and fees that must be filed in order to keep & maintain your trademark. It's advised that you keep yourself up to date on these fees during the life of your trademark. Prior to filing a necessary form, check this link to ensure that you'll have the necessary funds in time.

Application for registration, per international class (electronic filing, TEAS application)

325.00

Filing an Amendment to Allege Use under §1(c), per class

100.00

Filing a Statement of Use under §1(d)(1), per class

100.00

Filing a Request for a Six-month Extension of Time for Filing a Statement of Use under §1(d)(1), per class

150.00

Application for renewal, per class

400.00

Filing §8 affidavit, per class

100.00

Filing §15 affidavit, per class

200.00

How to do an Effective Preliminary Trademark Search

Before filing for a trademark, comprehensive research is needed to ensure that the name you want to use is legally available. This entails searching the pending & registered Federal and State trademark files as well as the US National Common-Law files.

However, before having comprehensive research conducted, it is advised that folks take advantage of as many free resources as possible. You can find a listing of sources to check out here. Now let's discuss how to conduct the most efficient preliminary search possible.

Let's say you have a clothing line geared towards women and you want to call it Heroine Next Door. Click on New User Form Search (we'll delve into the other 2 options next month).



Type in the name Heroine Next Door into the Search Term box. Be sure that Plural and Singular & Live and Dead are checked. Also ensure that you're searching for Combined Word Mark. Click Submit Query.



This will result in 0 hits but do not be fooled into thinking that your preliminary work is done. Once you've done the exact name search, it's time to expand your mind about your name. What are all of the possible variations to the name that could be seen as confusing? Here's a partial list:

HeroineNextDoor
Next Door Heroine
NextDoor Heroine
NextDoorHeroine
Heroine Neighbor
Hero Next Door
etc., etc.

And there we go – Hero Next Door, Serial Number 78776159 is a pending mark for, in part, a shirt line. While it's not the exact same name, it is strongly similar and likely similar enough that the average consumer would correlate the two. Now you know it's best to leave your heroine next door.

Let's just assume you weren't blocked at this stage. Now is the time to get into variations of spelling and synonyms. Here's another partial list:

Heroin Next Door
Heroyne NextDoor
Next Door Goddess
etc., etc.

What does a USPTO Search Look Like?

When an applicant submits a Federal trademark application, there is a timeline that's followed. Anywhere from 4-7 months after filing, the USPTO will conduct a search of their own records to look for any marks that may be conflicting to yours.

Let's look at ISHINE again, which was filed for floor finishing preparations. Here's what the USPTO Search Summary looks like:

*i$sh{"iy"}n*

*sh{"iy"}ne* or *sh{"iy"}ny* or *sh{"iy"}ni*

Okay, so that's confusing looking, right? Let's define the $ symbol & the * symbol before we dive into the search strategies:

• The $ symbol definition: Matches zero or more continuous characters. The $ truncation operator can be used in any search field to represent 0, 1, or more than one character other than a blank space character.
• The * symbol definition: Matches zero or more continuous characters. The * is a more efficient truncation operator for left and/or right truncation.

To understand the difference between the two:

*wonder* results in 1279 hits whereas $wonder results in 808 hits.

Now let's break down each search strategy:

*i$sh{"iy"}n*

The front and back asterisk symbols means any instance of those letters in that order will pop up, regardless if it's at the beginning of a word (e.g. ishine), the middle of a word (e.g. silvershine), the end of a word (e.g. finishing) or as separate words (e.g. ice shine, which blocked this mark).

One important note, you can see that the USPTO limited the vowel characters between the letters H and N to just find the letters I or Y. This means that the USPTO didn't look for marks like ishone. Since shone is an inflection of shine, that mark would be relevant.

*sh{"iy"}ne* or *sh{"iy"}ny* or *sh{"iy"}ni*

The concept is similar to the above. The main difference is that the USPTO added three different vowels to the end and dropped the letter I at the beginning. This results in marks such as shine, shyny, shining, etc. As you can well imagine, this resulted in a large number of hits – 2,595 to be exact. The USPTO then narrowed it by International Classification, which resulted in 926 hits.

Lastly, they narrowed it by the goods description. Interestingly enough, they only used two words to describe the goods – floor or floors. 46 hits were the result here. The limitation of the goods description is also troublesome. What about all the types of flooring that are out there? For instance, if there was a mark with a similar name who had filed as "hardwood finishing preparations" or "laminate finishing" it would not have come up during the USPTO's search.

The Problem with the USPTO: Flaw #3 – Meaning

The USPTO offers a fantastic free resource for potential trademark owners – the ability to search the Feeral trademark files for free. To get started, go here and click on the Search link that's located in the right-hand column.

However, as with many things in life, you get what you pay for.

When it comes to trademarks and locating potential conflicts and/or similarities, the SAM rule must be kept in mind.

What is the SAM rule?

Here's what the USPTO has to say about this:

Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion."

The dreaded likelihood of confusion conclusion means a refusal is on its way. To avoid that, comprehensive research should be conducted prior to filing.

What does similarity in Meaning mean? And how does the USPTO search engine fail in this respect?

"Similarity in meaning or connotation is another factor in determining whether there is a likelihood of confusion between marks. The focus is on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademark" Click here to read more.

The USPTO provides an example of CITY WOMAN (clothing) being refused because it's likely to be confused with CITY GIRL (also clothing), in terms of meaning. It's reasonable for the average consumer to believe these marks are related as woman and girl both describe a female person. Since it's for clothing, it's very easy to see how one could assume City Woman is a line of women's clothing whereas City Girl is a line geared towards young girls or teens.

Flaw #3, Meaning:

That being established, let's do a search using the USPTO search engine. A search for CITY WOMAN brings up 20 marks, one of them being the now abandoned CITY WOMAN in question.

But it does NOT bring up CITY GIRL.

So let's say CITY WOMAN was your mark & you conducted a search at the USPTO. You even searched variations, like City Women (no Girls here), Cities Women (no, not there) and City Lady (nope & now City Womanl doesn't even show up). You'd mistakenly think that the name was available.

Here's one example of why comprehensive research is important.

Click to read about the Sound flaw. Click to read about the Appearance flaw.

The Problem with the USPTO: Flaw #2 – Appearance

The USPTO offers a fantastic free resource for potential trademark owners – the ability to search the Feeral trademark files for free. To get started, go here and click on the Search link that's located in the right-hand column.

However, as with many things in life, you get what you pay for.

When it comes to trademarks and locating potential conflicts and/or similarities, the SAM rule must be kept in mind.

What is the SAM rule?

Here's what the USPTO has to say about this:

Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion."

The dreaded likelihood of confusion conclusion means a refusal is on its way. To avoid that, comprehensive research should be conducted prior to filing.

What does similarity in Appearance mean? And how does the USPTO search engine fail in this respect?

"Similarity in appearance is one factor in determining whether there is a likelihood of confusion between marks. Marks may be confusingly similar in appearance despite the addition, deletion or substitution of letters or words." Click here to read more.

The USPTO provides an example of TRUCOOL (a synthetic coolant) being refused because it's likely to be confused with TURCOOL (cutting oil), in terms of appearance. Now these marks are decidedly different but the fact that the goods are similar & the marks' APPEARANCE is very close, a refusal was issued.

Flaw #2, Appearance:

That being established, let's do a search using the USPTO search engine. A search for TRUCOOL brings up 3 marks, one of them being the now abandoned TRUCOOL in question.

But it does NOT bring up TURCOOL.

So let's say TRUCOOL was your mark & you conducted a search at the USPTO. You even searched variations, like TrueCool (no TURCOOL here), Tru Kool (no, not there) and Troo Cool (nope & now TruCool doesn't even show up). You'd mistakenly think that the name was available.

Here's one example of why comprehensive research is important.

Click to read about the Sound flaw. Click to read about the Meaning flaw.

The Problem with the USPTO: Flaw #1 – Sound

The USPTO offers a fantastic free resource for potential trademark owners – the ability to search the Feeral trademark files for free. To get started, go here and click on the Search link that's located in the right-hand column.

However, as with many things in life, you get what you pay for. This month's newsletter will be about the 3 fatal flaws of the USPTO search engine.

When it comes to trademarks and locating potential conflicts and/or similarities, the SAM rule must be kept in mind.

What is the SAM rule?

Here's what the USPTO has to say about this:

Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion."

The dreaded likelihood of confusion conclusion means a refusal is on its way. To avoid that, comprehensive research should be conducted prior to filing.

What does similarity in Sound mean? And how does the USPTO search engine fail in this respect?

"Similarity in sound is one factor in determining whether there is a likelihood of confusion between marks. There is no 'correct' pronunciation of a trademark because it is impossible to predict how the public will pronounce a particular mark. Therefore, 'correct' pronunciation cannot be relied on to avoid a likelihood of confusion." Click here to read more.

The USPTO provides an example of ISHINE being refused because it's likely to be confused with ICE SHINE, in terms of sound. The sound similarity and the common goods description (floor finishing preparations) are the 2 main factors that warranted a refusal.

Flaw #1, Sound:

That being established, let's do a search using the USPTO search engine. A search for ISHINE brings up 3 marks, one of them being the now abandoned ISHINE in question.

But it does NOT bring up ICE SHINE.

So let's say ISHINE was your mark & you conducted a search at the USPTO. You even searched variations, like EyeShine (still no ICESHINE), I Shine (no ICE anywhere) and AyeShine (no dice on the ICE). You'd mistakenly think that the name was available.

Here's one example of why comprehensive research is important.

Click to read about the Appearance flaw. Click to read about the Meaning flaw.

What does it take to get a Filing Date?

There are a variety of different dates for any given Federal trademark application – filing date, status date, publication date, first use date, first use in commerce date and registration date. I'll devote a few posts to each one.

Let's start with the first date you'll receive once the application is filed – the filing date.

Here's what the USPTO says about this:

"In an application under §1 or §44 of the Trademark Act, 15 U.S.C. §1051 or §1126, the filing date of an application is the date on which all the elements set forth in 37 C.F.R. §2.21(a) (see TMEP §202) are received in the United States Patent and Trademark Office (“USPTO”)."

What?

Let's simplify this paragraph. For any applicant claiming foreign priority or foreign registration, you'll be filing under §44. The rest will be §1, which is going to apply to most US-based applicants, especially small businesses and/or those just starting out.

Okay, so the application is filed but what does it take to receive that filing date? "All the elements [must be] set forth" – which means what? There are 5 areas that must be satisfied to receive a filing date from the USPTO:

(1) the name of the applicant;
Who is the owner of the trademark?

(2) a name and address for correspondence;
Who is the contact? What is the address?

(3) a clear drawing of the mark;
Okay, now it's getting a bit more complicated. When filing an application, the USPTO site generates this drawing. Whether or not it's going to be acceptable is dependent on what's submitted.
If you're filing just words, NO logo and NO stylized font, then a drawing of the mark will just be your name in plain text. Very simple. If you're filing words with a logo OR a logo alone, then a JPG image must be uploaded, which will then appear on the drawing. There are certain specifications, which I'll touch upon in a future post.

(4) a listing of the goods or services; and
What are you using the name for? What types of products or services? The USPTO is very picky about how this section is filled out.
They have a standard of acceptable identifications; the key is not only to fill out this section but fill it out correctly.

(5) the filing fee for at least one class of goods or services.
Last but not least, the money. We here at TradeMark Express always recommend filing the TEAS form, which is $325 per class. So the USPTO must receive at least $325. If you're filing in more than one class, it's $325 apiece.

And that's what it takes to get a filing date. This is NOT what it takes to become registered, that point should be made very clear.