What Is a Trademark?

Not all trademarks and trade names are legally protected; a trademark can be a symbol, word, and/or phrase, but it must be used to distinguish the goods supplied by a specific company. Often, certain businesses have many trademarks that are used to identify various products and service lines. Though once you begin using your trademark commercially, you should consider seeking further legal protection through trademark ownership.

Types of Trademark Protections

In general, names used in commerce must meet particular requirements to receive trademark protection. However, simply using the trademark or incorporating it into your business doesn't mean you're the trademark owner. Still, you can qualify for trademark ownership in two ways:

A common law trademark is less authentic than one that is federally registered.  A common law trademark right is temporarily yours once you begin using the mark in question to represent your company's products. Nevertheless, the first business to use a specific trademark commercially is the trademark owner legally.

However, certain words and phrases do not qualify as trademarks, including descriptive names (or those that designate a geographic region), proper names, and generic words. A descriptive trademark is anything that provides specific information about products and services. Therefore, a hot sauce company can't trademark the words "Spicy Hot Sauce."

The best trademarks are considered arbitrary, meaning they have no discernable connection to the products or services offered. The tax service H&R Block is an example of an arbitrary trademark. Yet, suggestive trademarks are weaker than arbitrary marks but are still protected.

Many trademark owners seek state and federal trademark registration. Each federal trademark application is processed by the USPTO. Having a federally registered trademark gives you the advantage if an ownership dispute arises. What's more, as a business owner or as someone who has made a substantial investment in their brand, you should register your mark federally to avoid losing your investment, in case someone outside your region registers the same mark. Meanwhile, engage a franchise lawyer to do a thorough trademark search before you begin using your mark. Because if another business has registered a similar trademark, you will not be able to receive federal trademark protection and will have to develop a new mark.

Federal trademark registration provides the broadest possible protection. However, your application must reflect the date you first used the mark, a description and drawing of the mark, and samples of the product in question. Keep in mind that descriptive trademarks will be rejected. Also, you'll need to designate your desired type of trademark: foreign registration, pending foreign application, use in commerce, or intent to use. The 'intent to use' trademark protects the mark before you begin using it for business. 

Furthermore, trademark owners are responsible for enforcing their exclusive rights in the marketplace. But as you expand into new markets, remember that if a business in that region has a similar trademark, they may own the trademark in that area if they started using it before you registered yours. Although If you believe another business is infringing upon your trademark rights, find out how long they've been using the mark before you send them a 'cease and desist' letter.  Similarly, if you open a business in a market where an identical trademark is already operating, you may be sued for trademark violation.

The Trademark Registration Process

After you submit your trademark application, an examining attorney will review it to ensure there are no similar existing registered trademarks. They will also determine whether your trademark application is strong enough to receive legal protection. If the trademark is too descriptive and thus not legally protectable, you will receive a refusal called an "Office Action Letter." Afterwards, you'll then have the opportunity to address the issues outlined in the letter.

In addition, trademarks accepted for registration by the examining attorney are published in the Trademark Official Gazette to notify others of your proposed trademark ownership legally. Final registration will be granted if no objections arise. The entire federal trademark registration period usually takes about eight months from the date you submit your application.

If you need help with the trademark registration process, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including working with and on behalf of companies like Google, Stripe, and Twilio.