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Trademarks: Determining whether your symbol can qualify as a valid mark

Requirements to qualify as a valid mark

In order for a mark to distinguish or identify the source of goods or services in commerce, it must be distinctive, must not give rise to likelihood of confusion with another mark, and must not fall within certain categorical restrictions. All three are key factors that must be satisfied before a symbol can meet the qualifications of a mark. 

Distinctive marks, indicative of source, are either inherent (i.e., suggestive arbitrary, or fanciful) or non-qualifying/descriptive with acquired distinctiveness via secondary meaning. While arbitrary or fanciful marks are by definition entirely random, suggestive marks are inherently less distinctive (but still qualifying) because they imply or infer some sort of connection to the goods or services. On the other hand, whether or not the mark is descriptive, requires consideration in the context of probable purchaser in the applicable market, and consideration of the goods and services in question.  When ascertaining what above category a mark will fall under, including whether the mark is suggestive or descriptive, courts look at the mark in its entirety (how many generic or descriptive components it contains), and consider factors such as competitive limitation or fairness, actual usage or popularity in the comparable industry, nature of goods and services, whether the mark literally describes a product, or requires imagination to make inferences, and other factors appropriate for the specific situation involved. If the mark is deemed to be descriptive, it is important to determine if it has acquired secondary meaning (indicative of the source of the product, instead of the product itself), by considering factors such as popularity, size, time and exclusivity. Thus, marks composed of last names, colors, design trade dress, or those that are geographically descriptive, require secondary meaning to become distinctive. Finally, note that generic marks (or marks that become generic) are those that by definition refer to categories of goods and services, instead of their source, and are therefore always non-qualifying. 

In addition to being distinctive, your mark must not cause likelihood of confusion with another mark. In ascertaining likelihood of confusion, consider common factors such as similarity of the marks, type of consumers at issue, product quality, geographical proximity (including similarity of buyers and instrumentalities of marketing), distinctiveness or dominance of the existing mark (such as size, fame, customer base and time), good faith, in-fact confusion and other factors relevant to your circumstances. In addition, to avoid confusion, note that marks must not reference a clearly false connection to something or somebody else, be otherwise deceptive (or deceptively misdescriptive without secondary meaning), use the name, portrait or signature of certain persons without their approval, or utilize restricted government symbols.

Finally, a mark must not fall within certain exclusions. Specifically, your mark must not be:

  1. scandalous, disparaging or immoral;
  2. must not dilute a prior mark;
  3. must not have a functional purpose, such as making a design more useful; and
  4. must not constitute a product design trade dress (if secondary meaning is absent).

Assuming your symbol qualifies as a valid mark (can be registered), has it already acquired a mark status?

While a trademark infringement action against a “mark” that cannot be registered is not likely to succeed (but see Lehman Act providing other protections), a qualifying symbol will gain trademark protection if it becomes a mark. However, in order for your inherently distinctive symbol to become a mark and acquire trademark rights, you must make a bona fide and continuous use of it in the ordinary course of trade, and in commerce (profit or revenue is not required). When possible, the trademark must be evidenced on the goods being sold. If it is a service mark, it must be placed on advertisements or displays. It is important to note that for descriptive and other symbols requiring secondary meaning to gain distinction, trademark rights will not apply until such secondary meaning has been acquired. The term “commerce” is interpreted very broadly, embodying any use, commercial or otherwise, by a commercial entity or a person, that in some way impacts or effects interstate commerce. Registration is not required for you to have trademark rights but by registering you get (among other things) constructive use and notice, presumption of validity and the opportunity to enjoy what is known as “incontestability status” after 5 years. However, as discussed, if your “mark” is not registrable, it is unlikely to be enforced on trademark infringement grounds.

Contact Our Orlando Trademark Lawyer

If you are looking for an experienced trademark lawyer in Central Florida to provide you with advice or assistance with the registration of your trademark filing, call us at 407-205-2330 for a free consultation. You may also fill out the online form located on this page and our Orlando trademark attorney will contact you shortly. We would be honored to assist you.


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