Thursday, January 26, 2023

Bob Cumbow: "The Most Important Trademark Fact You Probably Don’t Know"

A recent article by my friend, Bob Cumbow of Miller Nash in Seattle, Washington, caught my eye, and I'm delighted that he allowed me to re-publish it here. I often cringe at use of the word "trademark" as a verb, and Bob's article explains what the problem is.

The Most Important Trademark Fact You Probably Don’t Know

Client: “I’ve been in business for a couple of years now, and I want to trademark my company’s name.”

Trademark Lawyer: “What do you mean you want to ‘trademark’ it?”

Client: “I want to get a trademark on it.”

Lawyer: “Do you mean you want your company’s name to be a trademark?”

Client: “Yes, how do I get that?”

Lawyer: “Congratulations. You already did.”

This kind of conversation occurs almost every time a client or prospective client calls a trademark lawyer for the first time. Most businesspeople do not know that by choosing a business or product name and using it in connection with providing goods or services to customers, they become trademark owners and acquire enforceable trademark rights. They think that they must “get” a trademark by filing an application with the U.S. Patent and Trademark Office (USPTO), and if the trademark they want is “available” some nice person at the USPTO will “grant” it to them.

In the U.S. Supreme Court’s opinion in Matal v. Tam (2017), holding a portion of the nation’s statutory trademark law unconstitutional, Justice Alito wrote: “It is unlikely that more than a tiny fraction of the public has any idea what federal registration of a trademark means.” It certainly is not the way you “get” a trademark. To do that, you come up with a trademark—or brand or business name or product name or logo, call it what you will—put it on your product or use it to promote your service, and provide that product or service to your customers.

It's a fundamental principle of U.S. trademark law that trademark ownership arises from using a chosen mark in offering and providing goods or services to the public. It’s critically important for people in business to know and understand that they are already trademark owners. Yet this process is widely misunderstood by business people, by the news media who report on trademark disputes and invariably get the law wrong, and even by many lawyers who don’t practice trademark law.

Of course, it doesn’t help clear up this widespread misunderstanding when the USPTO itself includes on its website a section heading and link saying “Apply for a trademark”; or when the Trademark Trial & Appeal Board (which fastidiously insists on being call the “T-T-A-B” not the “T-TAB”) turns around and calls trademarks whose owners are seeking registration “applied-for marks.” Even the highest authorities are not immune from lazy uses of language that perpetuate and reinforce the public’s misunderstanding of what trademarks are and the difference between owning a trademark and registering it.

Client: “But wait—if I already have a trademark why do I need registration?”

Lawyer: “Actually, you don’t necessarily need registration. It’s not legally required. However, there are significant advantages to federal trademark registration.”

Among the benefits of federal registration are:

  • The presumption that your trademark is valid puts you in the best position to protect and enforce your trademark rights against users of the same or similar marks for similar goods or services. 
  • You are entitled to use the “®” registered-trademark notice, discouraging would-be adopters of similar marks. 
  • Your mark appears in the records of the USPTO and will be found by others who are searching to determine if they can adopt the same or similar mark themselves. 
  • The USPTO will refuse registration to any later applicant seeking to register a mark too much like yours.
  • Registration entitles you to list your trademark with the U.S. Customs & Border Patrol, protecting you against the import and export of counterfeit and infringing goods. 
  • Registration enables you to enroll your trademark in the Amazon Brand Registry and to better protect and enforce your trademark against online imitators.

The USPTO’s website is designed to enable trademark owners to file their own applications for trademark registration. However, it’s not a good idea to do so without first consulting a trademark attorney. The registration process is filled with traps for the unwary, such as properly identifying the owner of the mark, clearly describing the goods or services with which the mark is used, placing your goods and services in the proper class (out of 45 internationally recognized classifications), and paying the proper filing fee. In fact, businesses that do not have their headquarters or principal place of business in the United States are required to hire a U.S. attorney to apply for registration of their marks.

Read comments and post your comment here.

Text Copyright Robert C. Cumbow 2023.


At 8:06 AM, Blogger Gene Bolmarcich, Esq. said...

I'll be the contrarian. Yes, all that Bob says is correct (and always has been..Hi Bob!)..but to be honest, I don't think it causes any harm for that misconception to be out there and it may do some good. Proving common law rights can be difficult for individuals and small companies so having a registered trademark not only makes them feel good but it carries so much more weight when telling some other party that they must c&d, but not having bothered to register one's own mark, now being used as a sword. And, in some ways, the misconception is reason enough to perpetuate it by just filing that application under the assumption that you must (the lawyer of course should always explain the law correctly but I always lean towards pitching it in a way that it would make no sense NOT to try for a registration (unless of course it's not possible). The obvious comeback here is "sure, if you didn't, you'd be out of a job" (I register trademarks for a living). Probably true, but the day I stop believing that what I'm doing is NOT valuable for my clients is the day I should think of learning a real trade (like one where I HAVE to guarantee results..plumber, electrician..).

At 8:26 AM, Anonymous Anonymous said...

I don't have a problem with "applied-for mark," as I've always viewed it as shorthand for "the mark that is shown in the application under discussion."

At 9:08 AM, Blogger Jazzbo73 said...

Then, ... this blog should be renamed the "T-TABlog"

These are easy fixes.

At 9:16 AM, Blogger John L. Welch said...

Maybe I'm old-fashioned, but I believe in using trademark terminology properly. As does Bob Cumbow.

At 9:18 AM, Blogger John L. Welch said...

You want the blog to be the Tee-Tab-Blog? No thanks.

At 9:40 AM, Anonymous Leah Halpert said...

Personally, I get frustrated by people using the terminology incorrectly, but more frustrated by having to explain it all day every day. So I tend to let people say it wrong. Balance of frustrations.

At 9:45 AM, Blogger Eddie said...

Funny and so true. It's happened to me many a time.

At 10:36 AM, Anonymous Anonymous said...


At 1:20 PM, Anonymous Eric Adler said...

When talking to client, lawyers should use the trademark terminology that provides the most value to their clients. For some clients, it may be helpful to educate them on the nuances of formal definitions. For others, just use the terms colloquially and provide the services they need to build their business.
When talking to judges or other lawyers, I agree there is real value in using terms precisely.

At 1:35 PM, Anonymous Anonymous said...

Surprising, I didn't know trademark attorneys are just a bunch of grumpy old men who want newbies to fully educated on the nuances of trademark law.

At 1:50 PM, Blogger John L. Welch said...

Maybe we're old and grumpy, but we're not anonymous.

At 5:28 PM, Anonymous Anonymous said...

Does the USPTO make things even more confusing by allowing applications under Section 1(b)?

At 2:45 AM, Anonymous Anonymous said...

Agree with Adler -- no need to complicate things for a lay person.

At 11:46 AM, Anonymous Anonymous said...

I've never thought that playing law professor and pretending to be obtuse was good client service, but to each his own.

At 11:56 AM, Anonymous Brok Humbert said...

Nice dig at anonymity John.

This reminds me of the difference between proscriptive and descriptive linguistics. Prescriptive linguistics comprises the stereotypical grammar rules that tell people to speak or write a certain way, such as the difference between "less" and "fewer" (the latter applies to countable objects, the former does not). People usually get annoyed with these rules, however, when they feel that they can fully convey the message they want to convey regardless of whether these rules have been obeyed.

Descriptive linguistics simply describes the way people use language. The focus is on explaining how information is conveyed, not how it should be conveyed or if there is any specific "right" way to do so.

At first blush, John and Mr. Cumbow may come across as pretentious prescriptivists because they appear to give rules as to how the word "trademark" should be used, despite the fact that lay people think they are correctly conveying how to describe filing a federal trademark application. But Messrs. Welch and Cumbow are not saying that because they simply wish to enforce arbitrary language standards--they say that because to them, the message the lay person is trying to convey is not in fact matching up with what is being said.

Another wrinkle here is that unlike most language, the meaning of "trademark" is not entirely made up of the meaning that people give it through years of usage, but rather by law. Law is not immutable, but it is not subject to the same kind of fast-paced change that vocabulary, grammar, and semantics can be subject to.

Me personally? I may cringe when a non-lawyer uses "trademark" a verb, but I only explain its correct technical meaning when I have a good relationship with the person, or if it actually impacts their understanding of the conversation. However, I don't consider lawyers "lay people." If you went to law school and suffered through the inherently nitpicky and arbitrary standards of becoming a lawyer, I don't think I'm expecting much more of you by asking you to understand what "trademark" means in its legal sense and then use it accordingly.

At 1:59 PM, Blogger Peter Groves said...

I'm with Bob, as always, and John, but acknowledge that most of the world might not be. Can I add that another benefit of federal registration is that it can be used as the basis for extension of protection under the Madrid Protocol, or of a priority claim when filing in countries where registration *is* what brings a trade mark into existence!

At 12:32 PM, Blogger R Griffith Thomas said...

I am a licensed Master Plumber/Gas Fitter (MD) and a licensed trademark attorney (NY and DC)! I focus on effluent for the affluent which is true for both fields! Just learned a new term in a trademark law conference which is “Code-switch.” This apparently means you can say things anyway you want to! R. Griffith Thomas (not anonymous)


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