Tuesday, August 4, 2015

Today's Tip for Saving Your Trademark Filing Fee - Avoid Descriptive Phrases

A unique and catchy phrase can serve as a great trademark for your business. However, a common laudatory phase does not. A federal trademark registration gives one a nationwide monopoly over the mark, so the law is drafted to avoid giving any one person or business a monopoly over certain phrases or words that everybody in an industry should be allowed to use (generic terms, many descriptive terms, common phrases, etc.).

Section 1209.03(s) of the Trademark Manual of Examining Procedure states "[s]logans that are considered to be merely informational in nature, or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable [as a trademark]." For example, the Boston Beer Company attempted to register THE BEST BEER IN AMERICA but was denied under this rule and Sections 1, 2, and 45 of the Trademark Act.

That leads us to a trademark filing on July 28th for REAL GOOD COFFEE as it relates to "coffee cups, teas, and mugs" and "coffee." The applicant had only been using the phrase since October 21, 2014.
When this application is reviewed by an examining attorney at the Trademark Office in approximately three months, I would not be surprised to see an office action finding this mark merely descriptive because this slogan is a common laudatory phrase. Had the applicant been using this mark for several years and really distinguished itself in the market, it might get away with this filing, but that is not the case. If this application registered, think about the result - no other person or business selling coffee or mugs would be able to use the phrase "real good coffee" without risking liability.

Notably, the applicant did not appear to work with an attorney in filing this application. A qualified trademark attorney could have pointed out the potential difficulty in getting this mark registered and saved the applicant's $450 filing fee (it filed in two classes at $225 each). In this case, the applicant will have difficulty overcoming a merely descriptive refusal and that filing fee is in serious jeopardy.

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