Re: Trademark strategy for a US-based hypothetical company, Fashion Brand, LLC
1. In choosing your mark, it is advised to consider business needs as well as legal issues that your business may encounter.
Create marks that will be a “unique source identifier.” The idea here is that a connection should be built between the goods and services you provide and a customer/consumer’s mind.
Consider investment potential. Producing too many brands is not advisable. As noted by UPenn’s Cynthia Dahl, “if you spread yourself too thin, you’ll end up with less consistent and weaker branding.”
Consider if a mark satisfies requirements for being legally protectable. In this regard, two prongs, registrability, and enforceability are crucial to touch upon.
Is RUGGED DENIM a good mark?
This mark may be deemed as descriptive. It directly tells what denim is made of, and that is simply taking the mark’s distinctiveness away, diminishing its uniqueness, and increasing the likelihood of it being confusingly similar to other marks in the relevant market.
To USPTO database search result, RUGGED MILE DENIM is a registered trademark. Therefore, it is likely for RUGGED DENIM to be confused with RUGGED MILE DENIM, as their classes are also the same.
Is RUGG’D DENIM a good mark?
Compared to RUGGED DENIM, the use of RUGG’D DENIM is more reasonable, as it’s a unique source identifier. Therefore, taking the spectrum of distinctiveness into account, we conclude that the likelihood of confusion with other marks in the market is less.
2. Options to Protect Your Mark RUGG"D DENIM
Protection through Common Law
Provides a right owner with the ability to protect their mark against subsequent uses in the same region.
State courts play an essential role in its enforcement, and the state of mark’s use may be of paramount significance in the enforcement stage.
Protection through State Registration
Protection against subsequent uses in that particular state
The scope is limited in comparison to federal registration.
State courts play an indispensable role in its enforcement.
Protection through Federal Registration
Registration with the USPTO
The scope is broadened in comparison to “state registration” or a “protection via common law.”
Mark is protected at a federal scale in 50 states.
The endowment of a right that allows mark’s owner to use R, preventative approach to TM infringement
Mark to be listed in the USPTO database
Federal courts are in charge of federally-registered marks' enforcement.
Prima facie evidence of preceding use
Against this background, registering your mark with the USPTO seemed to be the best option among the three outlined above. In this case, however, because the company started using the mark at a state level, downtown Philadelphia, and has not launched their e-commerce platform for nationwide service-providing, at the state level, the “in-use application” is possible, while the intent-to-use application is possible at the federal level.
Requirements for Protection at Federal Level
Filing with USPTO
1(a) – “in-use” application
Availability of relevant goods must be exceeded to the whole public, not a confined group of people.
The in-use application will only be possible at the state level as the mark, RUGG”D DENIM, has not been available to the whole public yet, but rather only to those living in Philadelphia.
1(b) – “intent-to-use” application
At the federal level, the intent-to-use application can be made by the company as it does think of launching its e-commerce platform soon.
Filing a wordmark in all capital letters provides high flexibility and cost-effectiveness to the applicant.
It is imperative to register a mark with all letters being capitalized to bring flexibility to the applicant. RUGG’D DENIM, in that regard, met this provision.
Deciding which classes and how many classes to file in
List of international classes (45 goods)
1-34 involve goods (RUGG'D DENIM will be deemed here.)
35-45 involve services (When the firm starts offering its products through e-commerce, we will have to consider protecting its e-commerce platform's brand value by filing an application in this niche classes."
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