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Avoid "Over-Trademarking"


By
Smith & Hopen PA

Consider a company that makes a variety of products such as gloves, shoes, belts and hats. Out of the forty-five (45) international classification of products these four product types happen to all be in class 025. Some trademark attorneys will (unethically in our opinion) register:

  • ACME GLOVES™
  • ACME SHOES™
  • ACME BELTS™
  • ACME HATS™

Four trademark applications, four legal fees, four government fees….quite an expensive proposition. However, ACME is the “house mark” and GLOVES, SHOES, BELTS and HATS are all generic terms for the products sold under the ACME brand. Not only has the trademark attorney quadrupled the initial cost of protection, he has actually obtained weaker marks than what could have been secured. Rather than having a broad trademark registration for ACME alone, the client ends up with an expensive and narrow trademark portfolio limited by generic descriptors that will be disclaimed in the registration anyway.

Standard of Care: The client should have been advised that ACME is the house mark and that should be the brand to be secured. The client will inevitably counter that the customer will fail to understand what is being sold if they don’t add GLOVES, SHOES, BELTS and/or HATS to the respective labeling. However, the “secret” is to separate the brand from the generic descriptor. The separation is achieved with a line break, different font stylization or some other type of bifurcation. For example, if you want to register ACME™ as a brand, the trademark examining attorney will find this acceptable:

ACME™
Premium Gloves

Notice that the brand is in a much larger font and on a different line than the laudatory description of “premium gloves” which does nothing to identify the source or origin of the product alone. Sometimes trademarking less is more.

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