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[Gitman]

Hello,

I was just looking over the trademark application, and I noticed that you can either enter standard characters or you can specify a font, color or design to go along with the word or phrase.  My question is that if you choose the standard letters doesn't that give you better protection?  It seems like if you specify a certain font/color/design, even if your company does use one for the word or phrase, that you are basically saying, someone else can use the word or phrase as long as it doesn't look like yours.  Am I wrong?  

Or, if we do upload our company logo that has the word we want to trademark in a certian font with a small logo below it, will this also give us rights to the word in our class no matter what font, color or look it has?  This is a 7 letter word that we created, so we're sure it will be approved, but we want to make sure that we have full protection in our class, so which one should we do?  The standard non-descriptive word/s or with the logo?

Thanks

[Isaac]

Here are some concerns that might cause you to register a logo in addition to or instead of the word mark.

1) Word alone is not distinctive enough (maybe its merely descriptive).  You might want to register the logo and register word on the secondary register if the word mark could become distinctive over time.

2) Word mark alone confusingly similar to another mark.

3) Word is only a small part of the logo, and you want to protect against the use of a similar logo with a different word or with no words.

Registering a word mark does provide more flexibility.  If you change the appearance of the graphical part of your logo at a later point, you don't have to worry about starting all over with respect to seniority or with losing your registration benefits.

Often the answer is to register both.   I'd recommend getting some advice on what makes the most sense for you.

[Gitman]

Hey,

Thanks so much for the reply.  Yea, you mentioned something about being just descriptive.  I read one of the reasons why a mark may get refused is because they might think it's merely descriptive.  But, aren't most slogans for a company descriptive?  I thought that is what a slogan is, to describe an aspect of your cmpany and or products?  See, that is the part that scares me, because are slogan does fit in with the descriptive part, but so do a lot of others..what do you think about that?

Thanks

[Isaac]

The term "merely descriptive" means that the descriptive mark has not become associated in the minds of customers with the goods and services so that they identify the descriptive term particularly with the mark holders goods/services (i.e. term does not have "secondary meaning").

Descriptive marks having achieved secondary meaning are no longer "merely descriptive".   Such marks cannot be registered on the primary register, but there is a secondary register that acts as a placeholder while you develop the secondary meaning through advertising or other means.

Classifying a mark as generic, descriptive, fanciful, etc. is not always straight forward and first impressions may be mistaken.

Hope that helps clarify things.

[JSonnabend]

To add to what Isaac said, if the mark is merely stylized text, then the PTO will essentially treat the stylized mark as plain text for purposes of examination unless the stylization itself is enough to create a commercial impression separate and apart from the text.

- Jeff

[Gitman]

Hello,

Thank you so much for the input.  I think we will do the slogan with just standard characters, since we really don't use any discernible font or color with that, but our company name and logo, obviously has a distinct look to it, so we'll probably do the standard and also the stylized for that one.

Thanks.

[Gitman]

Hey,

Couple more quick questions.  The application seems pretty straightforward, but I just want to make sure, before we submit anything.  

For one, we are having a difficult time figuring out which class we belong in.  We build and sell customized laptops.  Do we register under class 42? Class 9?  Other?

Also, since we are selecting In Use, we have to supply a "specimen," image.  Can this be like a screenshot of an advertisement online?  Or of our website?  The examples mentioned mainly printed material, but we are exclusively online, and so that's where all of our advertisements are.  Would screencaps be sufficient for the specimen?

Thanks.

[JSonnabend]

Regarding which class to file in, you don't have to select a class if you're not sure.  The examiner will do that for you.  All you need to do is describe your goods and/or services accurately.

To the extent that you are branding your own laptops (as opposed to retailing other brands), you'll be in the goods class, not services.  If that's true, then you'll need to show an actual product bearing the trademark, or a website that qualifies as point of sale material, to satisfy the use in commerce -- and therefore the specimen -- requirement.

If you screw-up at this stage, you can set yourself back several months and perhaps even lose your filing fees.  I can't tell you how many clients have come to me after trying to "do it themselves" only to kick themselves when they realized they were being penny wise and pound foolish, especially when they realized how inexpensive it can be to use an attorney for this.

- Jeff

[Isaac]

You appear to be using "confusing" as shorthand for "a TMEP answer that is not as I might like".   I seem to see that same, unlikeable answer right smack in the middle of Jeff's post.  The real confusion seems to lie in the answer you got over the phone.  

I disagree with your contention that slogans never appear on products.  I see them on soft drinks fairly frequently.

Anyhow, I assume from your reaction that your web page does not have does not have provision for taking orders for purchase.   Are you putting *any* kind of distinguishing mark on your good?

I'll also note that the rules for service marks are slightly different than the rules for trademarks.   That's not necessarily relevant for you.

[Gitman]

Hey,

Thanks for the reply.  Well, yes, maybe I was generalizing, but for the most part slogans only appear on disposable goods like drinks, or maybe containers and packaging for fast food and whatnot.

Anyway, yes, of course our website is an ecommerce store.  You can completely configure and order a number of different laptop models.  But, read over the the stuff above...it seems pretty specific in saying that the page where the slogan appears on, must contain a specific product that the slogan is associated with, and there MUST be a method for purchase.  If the slogan appears on  just the main page of our store, than is that still considered a point of sale?  Not according to the guidelines above.

And, no...I am right when I say it is all confusing.  Because obviously, it says you can use an advertisement with the slogan, than it says most advertising cannot be used.  That is clearly misleading or confusing.

[Isaac]

Reread the portions of the paragraph you quoted that talk about a web page with a point of sale that does meet the requirments.   I think you can easily modify the POS place on your web page to have an appropriate display.   Is it really going to be that difficult to display a laptop in conjunction with your slogan on that page?

Basically the point is that for goods, advertising does not constitute use of a trademark in commerce.  So you have to make a use other than advertising.   A POS qualifies as other than advertising.  For the most part, the rest of your web page is advertising.

[Gitman]

Basically the point is that for goods, advertising does not constitute use of a trademark in commerce.  

Right, because everyone knows that advertising and commerce go together like oil and water.  

[Isaac]

I think what you are wrestling with are terms of art that do not have the ordinary meaning a layperson might give them.   You can make use of a slogan while engaging in commerce, but such a use may not constitute use of the slogan as a trademark in a way that establishes trademark rights.

The trademark office is not making up the law, but is following the law, so I think pointing at the PTO as the source of the confusion is misplaced.

[JSonnabend]

Unless, of course, your goods aren't goods at all but are actually services (e.g., retail services).  

Also, have you read In Re Dell?  There is no requirement for a "buy it now" button or a strict equivalent.

Maybe you're enjoying the frustration of untangling the TMEP, but if you're not, you could simply hire a TM attorney to handle your registration for you.  

- Jeff

[Gitman]

Ok thanks,

Just one question Jeff.  Would you say a Bizrate ad would qualify as a point-of-sale?  That seems like a perfect example of what they were saying.  We have some ads, that use the slogan in direct connection with the product being sold on that Bizrate ad.  And of course, the Bizrate has the pricing info at the bottom and also a button which takes you to our site to purchase the goods.  What do you think...come on buddy.  You know if this is good enough for a specimen or not.  What do you say?

Thanks