Trademark/Salesmark: general info. and prior art

Factual Questions
1

I understand that none of you can give legal advice, etc.

Here’s the situation: I have a client who has been using a particular two-word term to describe his central business concept, which is an analysis of the process consumers go through when they decide to buy or not to buy a product or service. Let’s call it “Buying Method.” He’s been using this since the mid-1980s. He was thinking about registering it with the USPTO as a trade mark or sales mark. My company doesn’t generally deal with such things, but he’s a good client and we like to help him out when we can, so we looked into the whole sales/trade mark thing, and what would be involved.

Well, we never got that far. My business partner looked up “Buying Method” on the USPTO’s web site, and it turns out that a major credit card company has just registered it as a sales mark. The review period ended about a month ago. However, they’re using it for a rather different thing: Not the reasoning a customer goes through before making a purchase, but a simple analysis (using web-based charts) of how your business pays for its purchases (i.e., you’re making most of your purchases via check, even though, if you used their credit card, you could save a lot in fees, etc., wink-wink).

We immediately advised our client to get a patent/trademark attorney. (So you can all relax about giving non-legally-binding advice, etc.) But I’m still curious about the situation on a more generic level.

  • What sort of review are you obligated to undertake before registering a sales/trade mark? I mean, I just searched for the phrase on Yahoo! and the very first thing that came up was my client’s web site, which has been around for 10 years.

  • Does it matter that the two things are quite different, even if they’re being named the same?

  • What’s the diff. b/w a sales mark and a trade mark?

  • Can my client get sued (well, anyone can get sued for anything, but you know what I mean …) if he continues to use the phrase in his business? I mean, it’s likely that the CC co. will never find out or care, but if they turn their guns on him … well, they have deeper pockets.

2

As always, I’m not an attorney and you should consult one, but:

“SM” actually means “service mark”, not sales mark. Pretty much a trademark is used for tangible products and service marks are used for services; that isn’t a firm thing, and when they’re approved by the USPTO they both get a circle-R, so it’s not that big of a difference.

Generally, you register a trademark for a particular use - for example, Hoover’s (the financial publisher) might have a trademark on the name when applied to their financial catalogs, but they’d have no case for infringement against Hoover’s the vacuum cleaner manufacturer, because there is no likelihood of confusion between the two products.

Also of concern would be that, generally, you can’t register a trademark on a descriptive title. Using your example, “Buying Method” wouldn’t be acceptable as a trademark for something that is a method for buying; however, “Gold Star Buying Method” might be.

3

Anyone (even non-attorneys) can attempt to register a mark. Attorneys should do some research to make sure that the mark has a good attempt of being registerable, or it could mean a trip to the state disciplinary commission/board for incompetence. When an applicant files with the USPTO, there will be a patent or trademark examiner (or both, depending on what you filed for) who will assess the mark (or patent – of which I will not discuss any further) and register the mark accordingly, if it is indeed a valid mark. If the examiner finds that the mark already exists, or there is a substantial likelihood of confusion, then the application will be denied. You can then petition the board for a review for an appeal, and then, if that doesn’t work, ultimately file an appeal with the Federal Circuit to have your mark accepted.

By this, I think you mean to say is, Does it matter if they’re named the same, but used in different aspects. Two marks can be the same name (though not the same illustration, as the likelihood of confusion test will never be satisfied), and both be reigstered, as long as there is no likelihood of confusion. This test is probably best satisfied if the marks are used in different industries, e.g. Empire (record label) and Empire (carpet retailers and installers). There are a number of tests out there, which are essentially similar. Such decision is made on a case by case basis. As a rule of thumb, examiners are pretty conservative, but well-reasoned (at least in my experience). If your mark is not granted, then in order to overcome the likelihood of confusion, your argument better be strong. Also, note that it’s not actual confusion, but the likelihood of confusion.

There is no such thing as a sales mark in trademark law. I think you mean Service Mark (SM). A service mark is a trademark, but it relates to services rather than a product or a good.

If the owner of the mark thinks your friend’s mark is infringing his, that he is indeed losing business, or is perhaps operating in an industry or a product line that the owner wants to expand to, and/or the owner’s mark in question is really strong, then I recommend to my clients to order a cease and desist letter. If that doesn’t work, and depending on the mark in question, a suit can be filed. Now, whether or not the mark owner wins will depend on the arguments made.

4

Oh, and if your friend’s Buying Method is a useful and novel invention, he may qualify for a business methods patent.

5

Thanks for the “Service Mark” reminder. Now I finally get to use this: :smack:

I hadn’t thought about the cease-and-desist. I may mention that to my client (though I’m still going to reemphasize the fact that he should hire a patent attorney). It would be amusing to watch the credit card co’s reaction, in any event.

6

Note that the “likelihood of confusion” test doesn’t always work very well, at least when a large corporation faces a small business in a Canadian court.

There’s been a butcher shop in Vancouver for many years, operating as “Save-On Meats”. Then a large supermarket chain showed up under the name “Save-On Foods” (which they had been using elsewhere). The judge ruled that there was no possibility of confusion. Shortly afterward one of the butcher’s customers took a moment to congratulate him on his new store, Save-On Foods.

Maybe it was just that judge.