Share this Page URL

Trademark > Enforcing Trademarks - Pg. 152

A Primer on Intellectual Property 152 same parties can contest a registered trademark and may win if they can prove that they used the trademark first. The trademark search is worth the investment to prevent your company from building goodwill in a mark that it may have to abandon later. Furthermore, if you are sued for infringement, a trademark search record is good evidence that the infringement was unintentional. Rejected?! The most common reasons trademark examiners reject applications are · Likelihood of Confusion. If the examiner finds prior filed or registered marks that are either identical or confusingly similar in the Federal registry, it will reject for likelihood of confusion. To persuade the examiner that there is no likelihood of confusion, you must show that the mark is dissimilar, or if the marks are similar, that the respective goods or services in question are too different to be confused. · Mere Descriptiveness. If the examiner thinks that the mark is only descriptive of the product, it will deny you exclusive use of the mark. You may prevail if you can prove that your mark is recognized by the relevant public or consumer, or that your mark has acquired secondary meaning by being well known in its industry, through many years of operation, sales, and ad- vertising. · Generic Word. If the examiner finds that your mark is a generic description of the product (instead of the source of the product, which is what a trademark protects), it will deny your application. Example: "Ball Games" would probably not be allowed for a sports equipment man- ufacturer, since it would prevent all others in that market from using the word "ball" in their marks. · Indefinite Description. This rejection has to do with the application, not the mark. Indefinite description means that you have not clearly and concisely identified the product or service to be protected. Fortunately, the examiners usually give you a suggested modification that would be acceptable to them.