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Trademark Registration - Less is More


By
Smith & Hopen PA

Consider this hypothetical:

A new corporation is formed to laser engrave trophies and plaques.  The name of the company is Bigtime Laser Etching, LLC.  The company will have a website, brochures, television advertisements and other marketing material.  What would you register as a trademark?

  1. BIGTIME LASER ETCHING, LLC™
  2. BIGTIME LASER ETCHING™
  3. BIGTIME LASER™
  4. BIGTIME™
There are a couple issues here....(1) whether to register the legal identity of the corporation that is formed; and (2) what parts of the name should be subject to federal trademark registration.

The Corporation Name:

In the example above, BIGTIME LASER ETCHING, LLC is not a valid trademark.  It identifies a legal entity that is registered to do business in one of more states.  This is not a brand but a legal designation and should not be registered with the U.S. Patent & Trademark Office.

How Much to Register: 

When evaluating the impact of a new trademark we often dissect the mark into what is "merely descriptive" versus what is fanciful or arbitrary.  In other words, do we refer to MICROSOFT SOFTWARE or do we simply denote MICROSOFT?  We already know that Microsoft Software Corporation develops and sells "software."  Adding the term "SOFTWARE" only limits the scope of the trademark protection.  What if we registered ANTON'S RED BALLPOINT INK COLORED PENS for red ballpoint ink pens.  The proposed trademark is far too verbose.  The actual brand identifier is ANTON'S and the description of the product is "red ballpoint ink colored pens."  If I tried to register ANTON'S RED BALLPOINT INK COLORED PENS the U.S. Patent & Trademark Office would require that I disclaim exclusive use of "red ballpoint ink colored pens."  However, I'm left with a very narrow trademark.  What if a competitor used ANTON'S ORANGE PENS?  They might have an argument that the two trademark create substantially distinct commercial impressions.

What I should do is simply register the term ANTON'S for ballpoint ink pens.  ANTON'S is the brand name.  The rest simply describes the product.  However, the next question is frequently...."well, how will people know what ANTON'S is for?"  The answer is to separate the brand from the description.  For example, if we registered ANTON'S alone then this would not be proper:
 
Trademark Branding Example

Notice that the font, color, and size are all on the same line.  This is called a "multilation" of the trademark registration and effectively causes it to go abandoned.  However, this variant is proper
 
:

Notice how "Ballpoint Pens" is now on a different line, different font, different color and different capitalization.  We have bifurcated (separated) the brand (ANTON'S) from the description of the products (ballpoint pens).

Trademark registration can appear logistically simple but it is actually strategically complex.  Brand identity is often the most valuable asset of a company.  Make sure it is well protected.



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