It’s become easy, perhaps too easy, to submit an application to register a trademark on your own. You can fill in and submit an application for U.S. registration here, but it takes the Trademark Office several months to examine the application. In that time you’ve probably invested in packaging, promotional materials, a website, and advertising, perhaps even made sales. After all that, what will you do when your trademark application is refused?
If you think you want to go it alone – and we don’t recommend you do – you’ll at least want to know what criteria an examiner will use to decide whether your mark can be registered. So, here they are:
First, marks that are merely descriptive of some quality or characteristic of the goods and/or services listed in the application, and words that are “primarily, merely” surnames may be refused registration on the Principal Register, relegated to the Supplemental Register, a weaker form or registration.
Then there are marks that cannot be registered as a matter of law: Marks that are appear to be deceptive and suggest a false connection with public persons or institutions may be refused. A mark that is or represents the flag or symbol of a nation or government institution, domestic or foreign, may be refused. The name of a living individual without that person’s consent may be refused. Marks used with goods or services that are unlawful under federal law may not be registered. The name of a deceased president will be refused while the president’s widow or widower still lives. And for the time being, words and devices seen to be “immoral” or obscene are being refused or at least held in suspension — although you can register a mark that “disparages” persons, peoples, and institutions.
After that, there is the concept of marks that are “confusingly similar” to any of the millions of already registered and applied-for marks. You would probably not expect to be able to register STARBUCKS for coffee or coffee shop services, but what about STIRBACKS café or BUCKSTAR coffee liqueur? “Confusingly similar” is not exactly the same. Confusingly similar considers whether consumers might confuse or mistake your mark for another mark, and so believe the source of your goods to be of someone else’s making. Nor is it simply visual or phonetic similarity. The meaning of words and images are considered, even meaning in translation – so that Stammbaum, German for “pedigree,” would likely be refused registration for use with dog food. Or for use with pet toys or leashes or kennel services, because the “relatedness” of goods and services as well as the likely consumers and markets for the respective goods and services are more factors an examiner considers in the analysis of similarity.
As in all areas of human activity, the fact that something is possible and made easy does not necessarily mean that doing the thing on your own is either practical or wise. It’s not easy to come up with that perfect “name” for your product or business in the first place. So having put that much effort and emotional energy into the process of branding, it’s a reasonable next step to gain some level of confidence that you will ultimately have exclusive rights in your brand by getting your trademark registered. The way to gain that confidence before you apply for registration is a trademark search. Whether you do a search yourself or engage a professional to do it, search first and find out what the risks are.