Protection of Trademarks: Everything You Need to Know
The protection of trademarks is enforced by the United States Patent and Trademark Office (USPTO) and similar organizations. 3 min read
The protection of trademarks is enforced by the United States Patent and Trademark Office (USPTO) and similar organizations. Protecting a mark is key to retaining the rights that a trademark or service mark provides. Highlighted below are tips for securing a mark and what you need to do to protect it.
Choose a Strong Mark
Choosing a strong mark will ensure that the USPTO approves your application, but if your trademark is clearly unique, it will also help with litigation in the future. The USPTO divides marks into four categories: arbitrary or fanciful, suggestive, descriptive, and generic.
- Arbitrary and Fanciful Marks: If you can't tell what a product or service is by its name, then it's a fanciful or arbitrary mark. When you see “Apple” and “Verizon,” for example, you can't tell just by the name what services these companies provide. Arbitrary and fanciful marks are the most distinct types of names. As such, they're the easiest to defend against infringement.
- Suggestive Marks: A suggestive mark suggests what a product or service may be used for but doesn't describe the product or service in explicit detail. The name “Coppertone” is suggestive of a suntan, for example, but doesn't describe actual suntan lotion and similar goods sold under this brand. Suggestive marks are unique in a way similar to arbitrary and fanciful marks. This makes them easy to protect.
- Descriptive Marks: A descriptive mark literally describes the goods or services that the mark protects. The mark could reference the industry or a product's specific color or ingredients. Note that the USPTO will only approve descriptive marks if they have a "secondary meaning." This requirement exists to ensure that descriptive marks don't unfairly keep other individuals or businesses from trademarking content that uses the same common words.
“Microsoft,” for example, is a portmanteau of “microcomputers” and “software.” The name is descriptive, but it also has a clear secondary meaning. Moreover, trademarking this name doesn't keep other companies from using the words “microcomputers” or “software” in their own trademarks.
- Generic marks that have no secondary meaning receive no protection under trademark law. A company using the name “Desks” to sell office furniture, for example, couldn't claim infringement against another business that used the word “desk” in its name.
Register Your Mark
You can register your trademarks and service marks with the USPTO and other trademark agencies around the world.
If you're only doing business in your state, you can register your mark in that state only to receive trademark protections. State trademark registration is faster and cheaper than federal registration, but if a business in another state uses your mark, you may not have grounds to stop them.
Though a registered mark offers benefits like listing the owner and mark in the USPTO search database, you can still receive protections for an unregistered mark under U.S. common law.
Maintain Your Mark
You must maintain your trademark to continue enjoying exclusive rights to it. This means renewing your mark with the USPTO, which is typically done once every five or 10 years. You must also display the correct trademark sign. Use ™ for unregistered trademarks, SM for unregistered service marks, and ® for registered marks.
If you don't mark content like your logo, slogan, and brand name, these materials are considered generic items and become part of the public domain.
Police Your Mark
The USPTO and other trademark offices don't actively search for infringing activity. As the mark holder, it's up to you to find infringing materials and stop the infringer.
Some private trademark watching services can help with policing your mark. These services are typically affordable. Also note that failing to take action against an infringing company could lead to difficulty enforcing your exclusive rights to a mark in the future.
Enforce your Mark
If you find a person or business who's using your mark without permission, you must stop the activity in order to protect your mark. This can usually be settled with a friendly note about the infringement, but you may also issue a “cease and desist” letter.
This is often enough to stop any infringement. You may work with a trademark attorney to pursue compensation in certain cases, however. If the infringer profited by using your mark or damaged your reputation by using the mark, you may be entitled to compensation.
If you need help with protection of trademarks, 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.