The United States Patent and Trademark Office (USPTO) defines a trademark as follows:
A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.
The USPTO provides a few example of how obtaining a federally registered trademark provides numerous benefits:
A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (whereas a state registration only provides rights within the borders of that one state);
Public notice of your claim of ownership of the mark;
Listing in the USPTO’s online databases;
The ability to record the U.S. registration with the U.S. Customs and Border Protection Service to prevent importation of infringing foreign goods;
The right to use the federal registration symbol “ ® ”;
The ability to bring an action concerning the mark in federal court; and
The use of the U.S. registration as a basis to obtain registration in foreign countries.
As one can see, a federally registered trademark is essential to being able to take action against trademark infringers in federal court and being able to prevent infringing goods from being imported into the United States.
There are two types of marks or “drawings.” A drawing is the term that the USPTO uses to refer to the required visual submission of the mark. The two types of drawings are the standard character drawing and a special form drawing.
What is a standard character drawing?
A standard character drawing is commonly submitted when the mark you wish to register consists solely of words, letters, or numbers. A standard character mark protects the wording itself, without limiting the mark to a specific font, style, size, or color and therefore gives you broader protection than a special form drawing.
A standard character drawing must have the following characteristics:
No design element;
No stylization of lettering and/or numbers;
Any letters and words in Latin characters;
Any numbers in Roman or Arabic numerals; and
Only common punctuation or diacritical marks.
What is a special character drawing?
If your mark includes a design or logo, alone or with wording, or if the particular style of lettering or particular color(s) is important, you must select the “special form” drawing format. If you are seeking registration of a word(s) combined with a design element, the drawing must depict both the word(s) and the design element combined as one image.
There are numerous factors that USPTO considers when someone wishes to register a trademark, but the two most common reasons are: (1) likelihood of confusion between the mark and one already registered; and, (2) if a mark is considered weak.
How does the USPTO determine if there is a likelihood of confusion?
The USPTO determines that a likelihood of confusion exists when (1) the marks are similar, and (2) the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source.
What is the difference between a strong mark versus a weak mark?
In addition to selecting a mark that is not likely to be confused with any pre-existing marks, it is in your best interest to select a mark that is considered “strong” in a legal or trademark sense, i.e., a mark that will most easily allow you to prevent third-party use of your mark. Some marks are easier to protect than others and these are considered “strong” marks.
On the other hand, if a mark is “weak,” it most likely is descriptive and others are already using it to describe their goods or services, making it difficult and costly to try to police and protect. Weak marks should be avoided; they simply do not have the same legal protections of a stronger and more distinctive mark.
What does the USPTO advise for selecting a strong mark?
Generally, marks fall into one of four categories: fanciful or arbitrary, suggestive, descriptive, or generic. The category your mark falls into will significantly impact both its registrability and your ability to enforce your rights in the mark.
The strongest and most easily protectable types of marks are fanciful marks or arbitrary marks, because they are inherently distinctive. Fanciful marks are invented words with no dictionary or other known meaning. Arbitrary marks are actual words with a known meaning that have no association/relationship with the goods protected. Fanciful or arbitrary marks are registrable and, indeed, are more likely to get registered than descriptive marks. Moreover, because these types of marks are creative and unusual, it is less likely that others are using them.
Are there any other reasons a mark might be refused registration?
While this is not an exhaustive list, here are some of the other reasons a mark might be refused registration by the USPTO:
[T]he mark being: a surname; geographically descriptive of the origin of the goods/services; disparaging or offensive; a foreign term that translates to a descriptive or generic term; an individual’s name or likeness; the title of a single book and/or movie; and matter that is used in a purely ornamental manner.
It is worth noting that these reasons are not always a complete bar to a mark being registered.
In particular to the Firearms Industry, there is trademark Class 13, which is specifically dedicated to firearms and related accessories. This class is defined by the Committee of Experts of the Nice Union and set forth in the International Classification of Goods and Services for the Purposes of the Registration of Marks (10th ed. 2011), published by the World Intellectual Property Organization (“WIPO”), as “Firearms; ammunition and projectiles; explosives; fireworks.”
Are Firearms Industry members limited to Class 13?
No, members of the Firearms Industry are not limited to only obtaining a trademark in Class 13. Firearms Industry Consulting Group can help you determine in which categories your trademark best fits. We can help you ensure that you get the strongest trademark protection possible, without having to spend excess amounts of money for unneeded extra categories.
We offer services that help our clients determine before applying, if they are likely to encounter problems with the USPTO when trying to register their mark and how to solve those problems. We handle the trademark search to ensure that a client’s desired mark has not already been registered. We also handle the paperwork and drafting of the trademark application. Finally, we are sensitive to the needs of the Firearms Industry in a way that few, if any, trademark firms are because of our commitment to the Right to Keep and Bear Arms as enshrined in the United States and Pennsylvania Constitution.