We receive a lot of questions from clients big and small about whether spaces in trademarks make a difference when it comes to registering and enforcing their trademarks. For example:
“I use ‘MYTRADEMARK’ prominently on my website, can someone else register ‘MY TRADEMARK’ with the USPTO?”
“My competitor registered ‘TRADEMARKTRADEMARK’ as one word with the USPTO, but I want to use and register ‘TRADEMARK TRADEMARK’ – does the space matter?”
This analysis is actually more complicated than it seems and this article will explore how spaces affect two different trademark issues – registration vs. enforcement.
Registration Requires Use of the Exact Trademark
When registering a trademark, the USPTO requires the applicant to provide ‘proof of use’ of the trademark that is identical to the trademark for which the applicant applied. That ‘proof of use’ must be used prominently in connection with the trademark’s products or services, positioned away from any other descriptive text or paragraphs not claimed in the application.
For example, if our firm’s logo showed GERBENLAWFIRM as a single word, the USPTO would not likely accept the following as ‘proof of use’ for GERBENLAWFIRM:
When registering a trademark, spaces matter and getting it right is crucial to avoid delays and, in a worst case scenario, being forced to abandon the application.
Typically, the USPTO Examining Attorney will review evidence and issue an “office action” if the specimen does not match the applied-for mark. The filing party must then provide a new specimen that was in use on the date the proof of use was originally filed. To submit a new specimen, the applicant must sign a declaration that the specimen was in use at the time the original proof of use was filed. If this is not true, it can be grounds for cancellation, even if the application is successfully registered.
Sometimes, this can be remedied by amending the basis of an application if its a new application.
However, when filing a Statement of Use (the proof of use filing you make after receiving a Notice of Allowance), you have one shot. If you file the wrong specimen, you will generally not be given the opportunity to remedy the error, and you will need to abandon the application and re-file. This could have catastrophic results: not only will you need to spend more money in filing fees, but you will also lose any filing date you had with the USPTO and will start from the beginning.
Applicants are allowed to make non-material alterations to their trademarks, so long as those alterations do not change the commercial impression of the mark. This can also be tricky – for example, the USPTO has held that changing a question mark to an exclamation point changes the inflection and overall impression and denied the amendment.
What if you use both uses of the mark – one with a space and one without? If both appear prominently on advertising, website, product packaging, etc., then the best practice is to apply for both variations. However, as discussed below, when it comes to enforcing your trademark against someone else, a single space is rarely enough to change the overall commercial impression of a mark.
But there are some notable exceptions.
SUPER BOWL vs. SUPERB OWL
When it comes to enforcing trademark rights, there are two main points to analyze:
If the answer to both of these is “YES,” then there may be trademark infringement that is damaging the distinctiveness and strength of a trademark.
As a general rule, if two distinctive trademarks are similar in sound, sound or meaning for related goods and services, then the junior user may be infringing on the senior user’s trademark rights.
When it comes to trademark registration, it is similar – the USPTO will deny a trademark application for a trademark that is confusingly similar to one that is already registered for related goods and services.
Most of the time, spacing between words does not change the overall impression of the trademarks. WalMart, Wal-Mart, and Wal Mart all maintain the same commercial impression, despite spacing or hyphenation. In one case, the USPTO held that RIVERBOTTOM was too similar to RIVER BOTTOM’S and denied the application.
However, it is possible that spacing can change the commercial impression of a trademark.
For example, consider a trademark like “We Are Nowhere.” With a single space, the phrase could be come “We are Now Here.” It’s a small change, but in my opinion it completely changes the meaning, sound and look of the phrase.
Another example is the well-known SUPER BOWL trademark. The NFL owns multiple registrations for SUPER BOWL, and the NFL is highly litigious about licensing use of the name. This has caused restaurants to find other ways to refer to the event without using the trademark, such as “the Big Game”.
Well, one small change in the space, and suddenly the SUPER BOWL, is the “Superb Owl.” One single space changes the commercial impression of that trademark drastically, and the NFL would likely be hard-pressed to enforce their rights (but, then again, I wouldn’t be surprised if they tried, especially if someone was using it to specifically refer the Super Bowl game as a trademark and not as a joke or commentary.)
In fact, a lawyer owns a trademark registration for Superb Owl, for “Providing a column in on-line electronic newsletters delivered by e-mail in the field of promoting the goods and services of entrepreneurs; Providing a column featured in on-line newsletters in the field of promoting the goods and services of entrepreneurs; Providing a column in online newsletters in the field of promoting the goods and services of entrepreneurs, via e-mail.”
In general, one space rarely changes the commercial impression of a trademark. However, it is important to view the trademark in the context in order because one space is the difference between an excellent bird (a Superb Owl) and the biggest football game of the year (the Superbowl.)