United States: Selecting And Protecting International Trade Marks

The right trade mark can be an important asset that generates goodwill and adds tangible value to a product, service or real property.

When developing a brand and selecting a trade mark, it is important to enlist the assistance of an internationally-focused trade mark lawyer to assess whether or not the proposed name is available for use and registration, and to identify any third party risks associated with such use in the relevant jurisdiction.

In most countries, obtaining a trade mark registration for a new name provides a number of benefits, which may include

  • Public notice of the registrant's ownership claim
  • A legal presumption of ownership and the exclusive right to use the mark (in a given country or region) on, or in connection with, the goods/services listed in the registration, including property management services
  • The ability to bring an action concerning the mark in an applicable court
  • Use of the registration as a basis to obtain registration in other foreign countries
  • Use of the registration as a basis for certain domain name registration challenges
  • The ability to record the registration with the applicable customs office to prevent importation of infringing goods
  • The right to use the registration symbol (®).

These benefits may differ by jurisdiction, again highlighting the need to consult with international trade mark counsel. When evaluating a proposed trade mark, to determine if it may be available for use and registration in a jurisdiction, a trade mark lawyer will assess the mark from several different angles.

EVALUATING THE STRENGTH OF A TRADE MARK

One primary consideration in assessing a proposed trade mark is its strength. When a mark is distinctive, it is often considered to be quite strong and entitled to broad protection. In the United States and many other jurisdictions, trade marks are categorised along a distinctiveness spectrum, and even those jurisdictions that undertake an analogous analysis will use a similar distinctiveness assessment:

  • Fanciful marks are invented/coined terms that have no meaning other than as a trade mark, and are typically afforded broad protection. VDARA, as used in connection with a hotel in Las Vegas, is an example of a fanciful trade mark.
  • Arbitrary marks are existing words that are unrelated to the applicable goods or services. Arbitrary marks are also considered to have a rather broad scope of protection. PENINSULA, as used in connection with hotels, is an example of an arbitrary trade mark.
  • Suggestive marks allude to the applicable goods or services without directly describing them. Suggestive marks are weaker than fanciful or arbitrary marks, and can sometimes be difficult to enforce against third parties. SAND HILLS, as used in connection with a golf course, is an example of a suggestive mark.
  • Merely descriptive marks immediately describe the goods or services, or communicate a feature or characteristic of the goods or services. Laudatory terms such as "best" or "grand" are often classified as descriptive.

    Absent a showing of acquired distinctiveness through continuous and exclusive use of a mark, "merely descriptive" marks generally are not entitled to trade mark protection. For example, CENTRAL TOWN MALL likely would be "merely descriptive" of a centrally located shopping mall. Conversely, and despite its arguably descriptive nature, MALL OF AMERICA has achieved registration in the United States, as the trade mark owner has demonstrated acquired distinctiveness of the mark due to its exclusive, long-term use and extensive consumer recognition
  • Generic terms are the known meaning of a word or phrase, and are not entitled to trade mark protection. For example, "art museum" on its own is not registrable as a trade mark for an art museum, and Hotel Chicago is not registrable as a trade mark for a hotel in Chicago.

Geographically Descriptive Marks

It is common to select trade marks that relate to a property location or environmental surroundings. Unfortunately, however, these types of marks may be refused registration if they are considered to be geographically descriptive (or misdescriptive).

In the United States, Europe and other jurisdictions around the world, a trade mark may also be refused registration if it describes the geographic location in which the goods or services originate, or if the mark misrepresents the geographic location from which the goods or services originate. For example, NAPA VALLEY WINERY for a winery located in Napa County, California would be a "geographically descriptive" trade mark, while CHAMPAGNE WINERY in California likely would be a "geographically misdescriptive" trade mark, as champagne originates from the Champagne region of France, not California.

Once a trade mark lawyer has determined that the proposed mark is sufficiently distinctive, the next step is to assess the risk of a third-party challenge or registration refusal based on the existence of a prior, confusingly similar, trade mark.

TRADE MARK CLEARANCE SEARCHES

Initial Screening

A prior application or registration for a mark that is identical to the proposed name may prevent use of the name. A preliminary search will determine if it is necessary to go back to the drawing board at an early stage, when there is still time to develop and run searches for alternative names. Trade mark counsel can quickly conduct and review an initial trade mark "knock-out" or "screening" search of the relevant trade mark office database to see if any registrations or pending applications exist for marks that are identical to the proposed name(s).

Because some countries, such as Australia, India and the United States, recognise "common law" rights in unregistered trade marks that are in use, quick internet searches are also helpful for identifying third parties that may have priority in a particular name without a registration.

COMPREHENSIVE TRADE MARK SEARCH

If the results of a screening search are clear, the next step is to review a comprehensive trade mark search report, which will provide a better assessment of whether or not

  • The proposed name is available for use
  • Potential third-party challenges might arise
  • Potential obstacles to registration exist.

A comprehensive trade mark search report includes references from the relevant country's trade mark database, as well as references to common law marks and business names because, as noted above, unregistered marks can sometimes pose a risk in the geographic area in which the owner operates. Reviewing a comprehensive search report gives a property owner or operator a stronger basis to assess the risk associated with the use and registration of a proposed mark.

A lawyer will also consider whether or not a likelihood of confusion will exist between the proposed mark and prior marks. Likelihood of confusion is the basis for trade mark infringement, so lawyers reviewing search reports typically consider variations of the likelihood of confusion factors used by the courts, such as the similarity in sight, sound, and meaning between the marks and the respective goods or services, and the similarity between the distribution, advertising and marketing channels through which the goods or services are offered, as well as other factors.

No search is perfect, and there is always a risk that a third party will claim it has prior rights in a trade mark, but following these steps should provide enough information to make an educated business decision about the viability of a proposed name and the potential third-party risk involved.

Selecting And Protecting International Trade Marks

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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