Valid and Invalid Uses of Words, Number, Symbols, etc. as Trademarks

This is not an exhaustive list or a conclusive list, each potential trademark is considered individually by the USPTO and the courts with respect to the goods, services & facts involved.

The applicable law for trademarks: Trademark Act §§1, 2 and 45, 15 U.S.C. §§1051, 1052, and 1127.

The applicable law for service marks: Trademark Act §§1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and 1127.

For examples of Strong Trademarks vs. Weak Trademarks, see

VALID MARK-Functions as a Mark

NOT VALID MARK-Does Not Function as a Mark

A trademark should be distinguishable from the rest of the text by use of a different font, different size font, different color or some other designation to consistently indicate these words or this symbol is being claimed.

When the alleged trademark is not set apart in any way to show prominence with respect to other words, for instance a mission statement, like a slogan, can serve as a trademark, but if the words are mixed in with other words and not set off to describe the source of the product or service, it is just a slogan not a trademark.

A trademark should be used as an adjective (not a noun or verb) to indicate that the product or service comes from a particular source.

When the alleged trademark is used solely as a noun, such as if the specimen uses the trade name with an address and does not show what goods or services are connected with the trade name. (A trade name typically is associated with a business not specific goods or services.)

The generic name of the class of goods or services should follow the trademark, such as Bond-Aid® Wetting Agent (for a registered trademark).

When a claimed trademark is merely used to describe the qualities of a product and not used in a trademark sense to describe the source of the product. Example: The mark SOFT.COM for facial tissues is merely descriptive of the tissue.

The appropriate symbols or the word ‘brand’ should be placed next to the mark to designate that this is a claimed trademark. TM or SM can designate unregistered trademarks or services and ® for USPTO registered trademark. Example: DealFinderSM  for an unregistered trademark..

All three of these are correct uses:

Scotch brand transparent tape

Scotch® brand transparent tape

Scotch® transparent tape

Note: Registration in a state of the United States does not entitle a person to use the federal registration notice ®. Du-Dad Lure Co. v. Creme Lure Co., 143 USPQ 358 (TTAB 1964). Improper use of a federal registration symbol that is deliberate and intended to deceive or mislead the public is fraud. TMEP 906.02 Improper Use of Registration Symbol.

When a domain name that is merely used as a domain name (noun that acts as address on internet) and not used to describe the source of the goods or services.

The first time the mark is used in text, a footnote may indicate the source of the mark.

The use of a mark

in connection with advertising, promotion and preparatory activities for services to be available at some time in the future cannot support registration.

If a potential trademark, often trade dress, is functional, it is invalid as a mark whether registered or not. A feature is functional if it is essential to the use or purpose of the product or it affects the cost or quality of the product. See Functional Marks for more information.

Background designs such as common geometrical shapes and borders are not distinctive uses of a mark.

Titles of single works are not registrable but a series of works may be.

Informational matter that is descriptive

Model or series numbers and grade designations

Names of artists and authors

Telephone numbers such as 1-800-555-NAME where merely adding numbers to a name does not make it distinctive (just as adding Inc. to a trade name does not make it distinctive).

Not Just Patents ® Legal Services provides a very economical package for USPTO (or international) Trademark Registration. See What to Expect from a Not Just Patents ® Trademark Attorney for more information on what steps we take to protect your rights and help you develop a strong trademark. We can provide each step individually or as a trademark registration package. A trademark registration (or trademark application) package includes: a ‘right to register’ step (which includes a distinctiveness analysis step), a trademark search (federal, state and common law search) and conflict analysis step, a goods and services identification step, a specimen review step, a state registration step, a federal registration step, and a federal Office Action response step. Our fixed price per classification for the whole package may be less than what you might pay to another attorney or law firm to answer a USPTO Office Action Refusal at an hourly rate. See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.

Stopping infringement as soon as possible is important to maintaining the integrity and authenticity of a trademark and to protecting your good name. A trademark or domain name that uses descriptive terms (is not inherently distinctive) runs the risk of losing trademark rights if the mark loses its secondary meaning from nonexclusive use. The strength and value of marks (see that are not inherently distinctive may depend on the trademark owner’s diligence in enforcing (protecting) the mark. See American Intern. Group [AIG], Inc. v. American Intern. Bank, 926 F.2d 829 (C.A.9 (Cal.), 1991) for more information. [This case involves AIG denying someone coverage because they were too risky and got sued for trademark infringement as a result.]

Not Just Patents ®  is a registered trademark of Not Just Patents LLC with a USPTO Federal Trademark Registration (R/N 3556868-service mark for Legal Services) on the Principal Register.

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Aim Higher® Facts Matter

Not Just Patents® LLC

PO Box 18716

Minneapolis, MN 55418


Call 1-651-500-7590 or email for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Evolved Means, Method or Format-Is your trademark registration obsolete?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

USPTO Search Method for Likelihood of Confusion

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

Decrease Your Vulnerability to Cancellation

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Trademark Integrity: Are your IP Assets Vulnerable?

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®

How to Respond to Office Actions  Final Refusal

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 TTAB Document Service  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS, TEAS RF and TEAS plus  

Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses

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