| For practical purposes of brand development your mark should identify the goods or services to be sold and distinguish your goods or services from those of your competitors.
A mark is available for registration if it would not infringe on another existing mark. Infringement occurs when a mark so resembles another mark that it is likely to cause confusion, mistake, or deception, because use of such a mark would subject you to liability for infringement.
What Qualifies as a Trademark?
A trademark is a word, symbol, etc that identifies the goods and services as coming from a particular source (i.e. your company) as distinguished from another source (i.e. another company).
In addition, to qualify as a trademark, the chosen mark must be sufficiently distinctive. The more distinctive, the stronger the mark will be thereby affording greater protection. On the other hand, marks that are merely descriptive of the product or service generally fail to qualify for trademark. Distinctive marks include those that are coined or fanciful, arbitrary, and suggestive.
Coined or Fanciful Marks.
These marks are inherently and highly distinctive, and accordingly, highly protected. These would be word marks that were created specifically to function as a trademark and otherwise have no meaning, i.e., Frisbee.
Arbitrary Marks.
These marks are distinctive and include marks that are arbitrary with respect to the product or service. For example, Apple for computers is a strong and distinctive mark because "apple" doesn't by definition have anything to do with computers. This is opposed to a weak mark that is not distinctive instead is more descriptive of a quality or characteristic of the good or service. For example, "Light Shoes" for running shoes would probably not qualify as a trademark because it describes the product itself - in other words, you get the idea about what the product or service is just by the name itself.
Suggestive Marks.
These are marks that are suggestive as opposed to directly descriptive. Suggestive marks generally suggest the quality, characteristics, or ingredients of the product or service.
Available Registration Types
State or Federal registration. To qualify for Federal registration the mark must be used in association with goods or services across state lines. But first a word about types of marks that may be registered:
A standard character mark is the one of the broadest trademarks. It means that the words can be presented in any fashion and still receive trademark protection – in this way you are not limited by a particular design.
A word and design mark receives narrower treatment and protection. Such a mark is limited because the particular design of the mark serves to limit and more specifically identify the words. This essentially protects the presentation of the words, and not necessarily the words themselves.
It is possible to have a standard character mark and a word and design mark, however it would require two separate filings.
Principal Register vs. Supplemental Register
Generally, a mark must be distinctive to qualify for registration on the Principal Register. A distinctive and strong mark is one that is arbitrary with respect to the goods/services. For example, Apple for computers is a strong and distinctive mark because "apple" doesn't by definition have anything to do with computers. A weak mark that is not distinctive is more descriptive of a quality or characteristic of the good or service. For example, "Light Feet" for running shoes would probably not qualify for registration because it describes the product itself - in other words, you get the idea about what the product is just by the name itself.
While not initially able to register merely descriptive marks on the principal register, such marks may qualify for registration on the Supplemental Register. (Supplemental Register provides some protection of your mark, but less than the Principal Register). After five years of using the mark, you can apply for registration on the Principal Register and then have full registration benefits. The Supplemental Register registration will still enable you to use the “®” symbol, reserve your mark against subsequent applications, and to enforce your mark against others in court. In addition, there are marketing benefits to descriptive marks. Some businesses find descriptive marks beneficial because they alert the consumer immediately to the nature of the product or service being offered; in our increasingly busy and over-stimulated lives you may have very little time with a potential customer before they move on the next product. Thus, a mark that only qualifies for the Supplemental Register may be superior to another mark for your products.
Infringement
A mark is available for registration if it would not infringe on another existing mark. Infringement occurs when a mark so resembles another mark that it is likely to cause confusion, mistake, or deception, because use of such a mark would subject you to liability for infringement.
The test for whether there is a likelihood of confusion, mistake, or deception with another a mark requires two key considerations: 1) the degree of similarities between the marks (appearance, sound, meaning and commercial impression); and 2) the relationship of the goods or services. This evaluation may involve looking at a number of factors such as: 1) The strength of the mark; 2) The similarity of the marks in sight, sound, and meaning; 3) The similarity of the products or services; 4) The evidence of actual confusion; 5) The extent to which marketing channels overlap; 6) The type of goods or services and the degree of care likely to be exercised in purchase; 7) The intent of the defendant in selecting the allegedly infringing mark; and 8) The likelihood of expansion by the parties in their respective product lines. Cairns v. Franklin Mint Co., 107 F Supp2d 1212, 1216 (CD Cal 2000), aff’d, 292 F3d 1139 (9th Cir 2002); E. & J. Gallo Winery v. Gallo Cattle Co., 967 F2d 1280, 1293 (9th Cir 1992).
Search Before Choosing Your Mark
ORDER OF PRECEDENCE
If a company has a federally registered trademark, then even if the company is not currently doing business in Oregon, it could move into Oregon at a later date and will have precedence over infringing marks in the area that began after registration of the original federally registered mark.
If a mark is not federally registered, not operating in Oregon, and later tries to move into Oregon, any currently operating marks in Oregon that might otherwise infringe take precedence. Thus, the moral of the story is that if you want to expand to other states, you want to register your trademark so that you can protect your mark in other states before you get there. The other moral is that due diligence now, can forestall a future trademark infringement suit.
Why or When You Should Register a Trademark
In addition to protecting your mark in other states before you get there, registration has a deterrent effect against future infringers, and gives you enhanced ability to aggressively protect your trademark against other infringers.
You want to ensure there are no marks currently operating in the state that could subject you to an infringement suit, and secondly that there are no federally registered marks that might later expand to Oregon and be able to stop you from using an infringing mark.
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