Tuesday, October 18, 2011

To Obtain A Trademark Registration, There Must First Be A Trademark

It sounds axiomatic that the registration of a trademark requires the existence of a trademark. Similar to giving birth, a trademark can register only after it exists. Rene Descartes said it best: Cognito ergo sum ("I think, therefore I am").

But some trademark owners claim the right to a trademark when, in fact, there is no trademark. A case in point pertains to the recent decision of the Trademark Trial and Appeal Board upholding the refusal to register the proposed trademark LOCKBACK pertaining to a folding utility knife. The examiner refused to register based on descriptiveness and the TTAB agreed. Indeed the TTAB determined that the proposed mark is generic and pointed to the product packaging provided by the applicant as proof of genericness.
The TTAB observed that the proposed mark is used on the product packaging in a manner that serves to described the product rather than in a manner that serves as a trademark.
The term “Lockback” is used to describe the type of utility knife (i.e., “Folding Lockback Utility Knife”). The term “Lockback” is not set off from the other words with which it is used.  “Lockback” is displayed in the same size, font, and style as “Folding” and “Utility Knife.”  As displayed on the package, consumers would perceive Ser No. 76679933 SHEFFIELD as a trademark, but not “Lockback.”  In this regard, applicant’s use of the federal registration symbol does not transform “Lockback” into a trademark.  See In re Aerospace Optics Inc., 78 USPQ2d 1861, 1864) (TTAB 2006); In re Brass-Craft Manufacturing Co., 49 USPQ2d 1849, 1853 (TTAB 1998); In re Remington Products Inc., 3 USPQ2d 1714, 1715 (TTAB 1987) (mere use of the “TM” indicator cannot transform an otherwise unregistrable term into a
The lesson: if you want to register a word as a trademark, then it is necessary to treat the word as a trademark. As instructed by the TTAB regarding the LOCKBACK application:
1. Don't use the proposed mark on packaging to describe the product.
2. Set off the proposed mark on the package so that it looks different from surrounding text. Use different font style, font size or graphics to create a different appearance for the proposed mark than the surrounding text.
3. Do not use another word on the packaging that appears to be the trademark, thereby creating confusion as to the true trademark.
4. Merely putting a TM symbol next to the proposed trademark does not create a trademark.
Cognito ergo sum

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