To qualify for federal protection, a trademark must be: (A) used in commerce, (B) sufficiently distinctive, and (C) not likely to cause consumer confusion.

In order to meet the “use in commerce” requirement, you must genuinely use the trademark in connection with goods or services. The use must be more than a “sham” or “warehousing” to be considered a use in commerce. You can not attempt to use the trademark just to register the trademark.” Displaying the trademark in the sale or advertising of the goods or services meets the use in commerce requirement. The following examples, by themselves, would not be genuine use in commerce: registering a domain name, registering as a business entity with a State’s Secretary of State, or printing business cards that are not distributed.

A trademark is only eligible for trademark protection if it is distinct enough from the underlying services that it represents. The four categories of distinctiveness, in order from least to most distinctive, are: (1) generic, (2)descriptive, (3) suggestive, or (4) arbitrary or fanciful. Generic and descriptive trademarks are not protectable; while on the other hand, “suggestive” and “arbitrary or fanciful” trademarks are.

A “generic” trademark is merely the word for the good or service itself, and cannot function aa s trademark. For example, using CLOTHES as a trademark for a company that makes or sells clothes would be generic. Next, a “descriptive” mark identifies a good’s characteristics or quality, including function or effect. Descriptive marks are only protectable if the term becomes distinctive from the applicant’s goods in commerce (see “acquired distinctiveness”). For example, using FLATSCREEN for a television manufacturer would be descriptive. Next, a “suggestive” term suggests a good’s particular characteristics, but unlike a descriptive term, requires the consumer to exercise their imagination in order to draw a conclusion as to the nature of the goods and services. An example of a suggestive trademark would be using HABITAT for a home furnishings company. Finally, “arbitrary or fanciful” trademarks are completely unrelated to the goods or services they represent. An example would be using APPLE to describe a computer company.

If a trademark is confusingly similar to another registered trademark that provides similar services, the USPTO will refuse to register the confusingly similar trademark. The central question is, whether the similarity of the trademarks is likely to confuse consumers about the source of the products or services. In determining the likelihood of confusion, courts look to the following eight factors for guidance: (1) similarity of the trademarks; (2) similarity of the underlying services; (3) strength of the mark; (4) marketing channels used; (5) degree of care likely to be exercised by consumers; (6) owner’s intent in selecting its mark; (7) evidence of actual confusion; and (8) likelihood of expansion in product lines. The more similar the marks, the greater the likelihood of confusion, and the more similar the goods and services, the easier consumers are confused about the source of the goods or service.

If you are registering a trademark, checkout our trademark registration guide.

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