Early Internet marketers disseminated misinformation leaving many Internet businesses with weak or no brand protection. Marketers in their quest to secure easy search rankings, as well as domain resellers seeking to drive up prices, failed to communicate this important message: A generic term will never be a trademark or brand for the product or service being sold.
There are three doors to file a USPTO trademark application. Whether you file on your own or hire a trademark attorney, it’s helpful to understand the three common ways to file your USPTO trademark, and the procedures used by the Trademark Office to decide if your UPSTO trademark application will be approved. The three ways include the Intent to Use Trademark Application, the Actual Use application, and for foreign applicants, to file using an existing foreign trademark application or registration as the basis for a USPTO trademark. The Intent to Use Trademark requires a second step, namely to file a Statement of Use Trademark.
Former members of BLACK FLAG were in a fight over rights to the name and famous logo when a second group called FLAG began touring using the logo. It’s a common problem that can be avoided. A few years ago, the founders of the largest Mexican group in America were jailed in Mexico for two months for attempting to perform in Mexico under their own name.
Descriptive trademarks are “bad brands,” since they don’t qualify for trademark registration. They spend 5 years on the Supplemental Register and after release, must still prove secondary meaning aka acquired distinctiveness in order to be enforceable against third parties. This is an expensive, difficult hurdle most that most can never meet.
Clients and marketing professionals are often confused as to the difference between registration of a domain name and registering a trademark or service mark. Domains names are not trademarks. A domain is nothing more than an Internet address, much like the street address where you live. Domain names do not afford protection against use of the domain name for competitive products or services unless separate trademark rights are established and registered.