Best Practices for Trademark Usage

Choosing a Great Product, Service or Company Name 

Swiffer Sweeper v. Swivel Sweeper

You should choose a name for your product or service that does not contain a word that describes your product.  If you do, a competitor could choose a trademark that is close to your trademark and you may not be able to stop them. 

One example is the SWIVEL SWEEPER.  This copycat name is obviously intended to sound like its competitor- the SWIFFER® SWEEPER.  The SWIFFER® SWEEPER was likely a combination of "SWIVEL" and "SWEEPER".  The copycat just used the generic word "SWIVEL".  If a trademark does not contain generic words in it, you the trademark owner will be better off.

POLO v. U.S. Polo Association

I just noticed that the U.S. Polo Association (a non-profit in the competitive polo sporting endeavor) is offering goods directly competing with POLO (Ralph Lauren).  So, can the U.S. Polo Association offer identical goods as the famous POLO trademark?  You might assume that POLO would automatically win.  Not so fast.  Many factors would have to be assessed.  Who offered the goods first?  Are the trademarks similar?  The Courts look at many factors to decide if the new user is infringing the first-in-time trademark. 

The U.S. Polo Association uses the outline of a polo player on a horse, though the logo is slightly different from the POLO pony outline, with the words "U.S. Polo Association".  Are the marks similar to each other in "overall commercial impression""  This term gives value to both the text and graphical elements of the trademark.  The U.S. Polo Association is an over-100 year organization and has been granted numerous trademark registrations by the U.S. Trademark Office over the years.  Given that the U.S. Polo Association goods are being offered nationwide and I assume they have quality legal representation, it seems likely that they can offer goods in direct competition with POLO.  An interesting result.

Caveat.  But, to the detriment of the U.S. Polo Association, the organization has used numerous graphical images to represent itself.  When a trademark owner changes its mark this can significantly reduce the value and equity in the old mark because trademark rights generally continue only during the time that the trademark is in use (plus a short grace period to re-use the mark).

"ALL THAT AND MORE" is prevented from being registered as a trademark

ALL THAT AND MORE attempted to register its trademark at the US Trademark Office.  The Examiners ruled that the Applicant may not register its trademark application where the root term "ALL THAT" is present in two conflicting trademarks: (1) SHE’S ALL THAT for Blouses; Dresses; Jackets; Jumpers; Pants; Pullovers; Rompers; Scarves; Shorts; Skirts; T-shirts; Tank tops; Vests; and (2) ALL THAT GLITZ for Retail store services and on-line retail store services featuring jewelry and woman's accessories, namely, sunglasses, handbags, and belts.  Applicant loses and may not register its mark according to Examiners at the US Trademark Office.

This shows that a phrase can be registered and will prevent copiers from using similar phrases- and the phrases need not be identical.