What’s in a name? (Part 2)

by Jimmy Bewley | February 10, 2012

The “No Fee Guarantee®”

For the most part, attaining a trademark registration can be a fairly uncomplicated process. It really depends on the attributes of the mark and the relationship to its alleged owner. Many of you may remember cj’s “No Fee Guarantee®” battle. As evidenced by this long, arduous, and expensive fight, these battles can be difficult.

 The USPTO initially turned us down. It claimed the “No Fee Guarantee” was too generic, but more important, too descriptive to gain its approval. In other words, in the “legal” classification category, claiming we have a “No Fee Guarantee” was no different from claiming we have a “contingency fee” arrangement. All personal injury lawyers use a contingency fee agreement, so what made the “No Fee Guarantee” distinctive? We appealed the decision and eventually won, but it wasn’t easy. Our entire argument hinged on proving the “No Fee Guarantee” was unique and “distinctive” language that describes our law firms’ services when compared to the ordinary contingency fee agreements.

After spending many months and thousands of dollars gathering evidence to convince the USPTO’s examining attorney that we had met the primary threshold of “distinctiveness,” we finally found success. One key element of our attack centered on testimonials from clients, non-clients, and other legal experts who claimed they recognized the “distinctive” nature of the mark. The key is, the more likely the general public associates the mark with your brand, the more likely it is that the “distinctive” threshold has been met. It’s more about how the public feels about your brand’s connection to the mark than how you feel. The stronger the connection the public has, it’s more likely to cause confusion if someone else uses it, and ultimately, the more trademark laws will afford protection.

Here’s more good news: The plaintiff in a trademark conflict has the burden to prove the validity of the mark. When you receive federal registration, you now have prima facie evidence of the validity of the mark itself, the registration, your ownership, and your exclusive right of use and replication—all backed by the federal government.  While not ironclad and impervious to attack, it’s a much stronger position than relying on common law theory or simply arguing you have something special.