Getting a Trademark: Everything You Need to Know
Getting a trademark, a form of intellectual property that notifies consumers that the goods or services identified with that mark come from you or your company.3 min read
Getting a trademark, a form of intellectual property such as a word, distinctive name, symbol, logo, slogan, or design, notifies consumers that the goods or services identified with that mark come from you or your company.
Simply having a trademark does not provide you with protection against infringement. To enforce your trademark against other businesses using or attempting to use your trademark without your permission, you must register your trademark with the appropriate governmental agency.
The sooner you register, the better. If you apply and your proposed trademark is already in use, your application will be rejected and you’ll lose your application fee and the time you spent in preparing the application.
Legally, if you do not take steps to protect and enforce your trademark, you may lose it. The point of a trademark is to notify consumers where the product with that mark comes from. If enough people use your mark without your permission, to the point where it confuses people where a product is coming from, your trademark may not be enforced.
Registering your trademark also has some advantages:
- Legal presumption of ownership in an infringement suit
- Provides public notice of your rights
- You can record your mark with the U.S. Customs and Border Protection Service to prevent importation of infringing foreign good
- Allows you to use the ® symbol on your goods or services
- Allows you to bring an infringement action in federal court
- Allows you to apply for trademark protection in foreign countries
Where to Register
You should register your trademark with the state in which you sell your services or product. This registration will protect your trademark within your state’s borders, and you may bring an infringement action in state court. It also allows you to use the symbol ™ for goods and SM for services. If you plan to expand your sales to other areas, nationwide, or internationally, you should register your trademark with the federal government and the foreign countries in which you plan to do business.
The federal government’s trademark registration department is in the United States Patent and Trademark Office (PTO). You are not required to register your trademark with the PTO. However, this registration will protect your trademark within the whole country, allow you to bring a suit in federal court, and allow you to use the federal ® symbol.
If your mark is strong and has never been used by others, it will be considered a trademark by virtue of your using it in commerce for several years.
Before registering, search on the PTO website to compare your mark to other registered marks or pending applications using the Trademark Electronic Search System (TESS). Also look to your state’s trademark database for similar marks and related goods and services to ensure your mark will not be confused with other marks that are not federally registered. Finally do a Google search to ensure an unregistered trademark will not prevent you from registering your trademark.
The PTO will not register your mark if two or more marks are so similar and the goods or services they cover are so related that consumers would mistakenly believe they come from the same source. This is called “likelihood of confusion.” If another company, other people, or other brands are similar enough to likely cause confusion, it will not be accepted by the PTO. It’s not just the same marks or names, but also similar ones.
This is the same with domain names. Register your domain name to protect against trolls.
An internet domain name is not a trademark and registering your domain name does not provide trademark rights. However, prominent use of a web address in public may qualify as actual use for purposes of applying for trademark registration. The domain name, in and of itself, does not automatically constitute a trademark. (See Anti-Cybersquatting Consumer Protections Act, November 1999).
The Internet Corporation for Assigned Names and Numbers (ICANN) authorizes a supervisor of domain name registrations and has an online adjudication system for settling domain name disputes if you find you need to take action.
If you need help with getting a trademark, 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 work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.