Test your understanding

Hygenic Intangible Property Holding Company obtained a registration for the trademark “TheraBand” for pharmaceutical products, and for toys and sporting goods. A “TheraBand” is an elastic piece of thin plastic several feet long (like an enormous rubber band) used in physical therapy stretching exercises. How strong a mark do you consider “TheraBand” and would you classify it as generic, descriptive, suggestive, or fanciful or arbitrary, and why?

The fact that Hygienic obtained a federal trademark registration for “TheraBand” establishes that the mark is not generic.  “Long, thin elastic plastic strap used for physical therapy” for instance, is generic in that it designates a category of products rather than a particular supplier of them. “Long, thin….” is also descriptive of the product and does not distinguish Hygienic from other makers of the product. On the other hand, “TheraBand”, while suggestive of the product to which it is applied, is not a term commonly used by consumers to describe this product. There are hundreds of therapies implied by “Thera”, and “Band” has various meanings as both a noun and a verb. Accordingly, unless a consumer was already familiar with the mark as applied to Hygienic’s product, “TheraBand” might conjure in his minds dozens of unrelated products, and therefore, Hygienic’s use of the term is distinctive and protectable.  

You are establishing a business that offers in-home dialysis treatment to patients who require hemodialysis six or seven times a week. You submit an application to register the word mark “DailyDial” for your business. Do you anticipate the U.S. Patent & Trademark Office will issue you a registration of this service mark? Assume you are successful, but after your mark has become well known to consumers of these therapeutic services, it is challenged as confusingly similar to that of a telemarking firm that has registered the same word mark for its “service” of making robocalls to sellers of sketchy life insurance policies. Do you expect the telemarketing firm will be successful in preventing your use of “DailyDial” based on its prior registration of this mark?

If the U.S. Patent & Trademark Office attorney reviewing your application determines there is no existing registered mark “DailyDial” for home dialysis services — which would preempt yours — s/he will determine the degree to which your mark is distinctive. This word mark is not inherently distinctive because it is at least suggestive, if not descriptive, of the service you intend to brand with it. It may only become distinctive over time as consumers gradually associate this term with your services.

On the other hand, the mark is clearly not generic because the it alone does not simply identify the services offered, and not a particular provider of them — e.g. “In-home Daily Dialysis Services.” Accordingly, you could likely obtain a registration for “DailyDial” after you have demonstrated to the USPTO attorney that your mark has acquired distinctiveness through your ongoing use of it, which has led consumers to associate it specifically with your services.

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If the Robocall provider has registered “DailyDial” only for its automated phone call services, its challenge to your home dialysis business would probably not succeed. This is because it is unlikely that even consumers of both services (assuming they exist, which is also unlikely) would assume that a single source would offer such unrelated services.

Assume you have developed a nutraceutical based on a powdered extract from coconut shells. You claim the powder, applied topically to the scalp, helps stimulate hair growth in balding men. Your product, which you have branded with the trademark “Hairsuit” is remarkably successful and within months of its launch is selling in more than 20 U.S. states. 

Despite your success you understand that prosecuting a trademark for Hairsuit will involving hiring an attorney, and at least several thousand dollars to obtain and maintain the federal registration. With hopes of buying a Ferrari, you are harboring your resources, and decide to forgo obtaining a federal registration for your Hairsuit mark, although you attach the federal registration indication (R) to the mark on all your products. Have you found a “back door” to federal registration, and obtained the protection this provides trademarks? 

Of course not! Not only do you not obtain any of the protections of federal registration, but you may also incur statutory liability for false marking, and a penalty of $500 for each offense. For every packet of Hairsuit you sell for $10 you will incur a $510 loss. Moreover, the trademark statute provides an incentive for private parties to tattle on their competitors’ false marking, awarding them half of any penalty the Government imposes based on wrongdoing a private party has identified. 

You will likely much sooner amass funds for the Ferrari if you pursue federal trademark registration as early as possible, as this will lower the chances of having to defend yourself against challenges to your use of the mark.  This is especially true given the expanding distribution of your product throughout the U.S., as the federal registration will protect the mark in all 50 states. Also, the mark will be accessible on the national registered trademark database, which puts other potential users of this mark on notice that you have a monopoly on use of it for a particular class of products. And, with a federal registration, you can legally apply (R) to your mark and put everyone on notice of your exclusive rights to it in the U.S for this product.