What is a Trademark?

A trademark is a symbol, slogan, design, word, or combination of elements that identifies a party's goods or services. The purpose of a trademark is to distinguish these goods or services from someone else's. A trademark can be almost anything in terms of design as long as it makes it easy for the consumer to identify it with a particular service or product.

Examples of popular trademarks include the NBC three-toned chime "G E C," the Nike "swoosh," the McDonald's "golden arches," and the shape of the Coca-Cola bottle. A trademark can even be a color, such as T-Mobile's vibrant pink.

How Are Trademarks Different From Trade Names or Copyrights?

A trademark identifies a commercial service or product. Trade names, also known as business names, identify the business for non-marketing purposes. And copyrights are used to protect original works of expression.

Trade names also include non-marketing uses on bank accounts, stock certificates, contracts, letterhead, and other documents in order to identify the entity. However, trade names can also be trademarks when they're used to identify specific services or goods.

While copyrights protect creative designs, they don't typically protect individual words or slogans. A copyright also doesn't exclude others from creating the same type of design. As such, a logo design may need to be protected by both trademark law and copyright law.

A copyright owner is the creator or employer of an idea and maintains rights for a term of 50, 75, or 100 years depending on the copyright. No distribution is required. Trademark owners' rights are indefinite as long as they protect and use their trademarks properly. Trademark owners must also use their marks continuously in commercial endeavors to retain ownership.

What is the Purpose of a Trademark?

The main purpose of a trademark is to prevent unfair competition between companies that use consumer confusion to get more business. For example, if an independent diner used a golden, arched "M" as its logo, it could confuse customers who think the establishment is a McDonald's. Causing this type of confusion is against trademark law.

The purpose of trademark law is twofold:

  • A trademark helps customers distinguish between products
  • A trademark protects the owner's investment and reputation

In the 1995 case of Qualitex Co. v. Jacobson Products Co., the Supreme Court described trademark law as "preventing others from copying a source-identifying mark" and assisting the customer in making purchasing decisions. The law also helps make sure the producer will get all the reputation-related and financial rewards associated with its product.

It's important to remember that having a registered trademark doesn't give you blanket rights to that particular name. For example, "Delta" is both a sink manufacturer and airline, among a few other businesses, and yet nobody confuses them. There is enough distinction between the products and services that no customer would confuse Delta sinks with Delta flights.

If the USPTO doesn't believe a customer can confuse your trademark with someone else's, your registration will be allowed to mature. However, the USPTO has a 30-day period in which it posts a "Notice of Publication," allowing anyone to challenge the trademark application. 

Certain applicants are required to file what's called a "specimen of use," which is an example of your trademark being used in the real world. If your application fails to include all requirements, including a specimen of use when requested, it will be returned along with a filing fee refund.

Why is a Trademark Important?

As well as serving as a roadmap for customers, a trademark prevents theft. If you've created a trademark, you enjoy certain legal protections and preventive measures. These preventive measures include:

  • Trademark registration at the federal and state level. You don't need to register a trademark to keep others from using it or from creating a similarly confusing mark. Still, registration gives you multiple legal advantages you wouldn't otherwise have when pursuing those who have used your mark. The biggest advantage is being able to give a constructive notice to the public, preventing anyone from claiming they were unaware of the trademark's existence. You can also register a trademark federally if you want to use it for interstate commerce.
  • Use of notices. Using the TM or SM symbol is another way of giving enough notice to the public, further cementing your legal protections.
  • Pursuing infringers. Unless you take action against a thief, your trademark could be lost. Registering your trademark is more likely to dissuade someone from using your mark without your permission, although this isn't always the case.
  • Controlled licensing. Trademark law allows you to license your trademark as long as the owner requesting the license controls the quality of services and goods bearing the trademark. Maintaining the quality of services and goods is important for maintaining customer confidence in the brand and for building the trademark's reputation.

What is Protected By a Trademark?

Trademarks protect customers from being misled. Say you're in the market to buy a COACH designer handbag. Without trademark protections, the market would be flooded with knockoff COACH bags sold in every corner store. You could end up buying a fake bag even with the full intention of buying a real one.

There's also the issue of customer confidence. You know a COACH designer handbag is expertly made with a commitment to quality. You can feel confident it will last. A knockoff version, however, won't meet those same standards of quality. In this way, a trademark cultivates customer loyalty and relationships between people and their favorite brands.

Trademark registration also gives you a claim of ownership over your mark's use. You can use the registration as proof in court of the trademark's validity if a dispute arises. While you will still need to consult an attorney if this should happen, your registration is your proof of ownership. No one else can take that from you.

Trademark protections are not a one-size-fits-all. In fact, trademark protections range on a four-point scale, which is why it's important to consider how you name your business. Consider the following types of trademark protections:

  • Generic – common descriptions cannot receive any protection under trademark law because they're in wide use
  • Descriptive – trademarks consisting of adjectives cannot be reinforced unless there is another meaning associated with the mark
  • Suggestive – suggestive terms receive trademark protection even without a secondary meaning as long as the term implies something without describing it
  • Fanciful or arbitrary – these terms are distinctive and enjoy the highest degree of trademark protection; arbitrary words are meaningless without respect to the product while fanciful words are made up

Reasons to Consider a Trademark

When you own a business, you work hard to build up your reputation with customers. That reputation deserves protection.

To receive trademark protection, you don't need to register. Still, registering your trademark with the United States Patent and Trademark Office (USPTO) has clear advantages, including:

  • Exclusive nationwide ownership of the trademark
  • The right to use the ® symbol to show your trademark's registered status
  • The USPTO's refusal to register any close variations of the trademark, which could result in competition
  • The right to have your trademark become indisputable after five years of continuous use
  • The act of putting other users on notice with public registration

Even if you're not ready to use your trademark, you can still register it. Simply file an "intent-to-use" application. This lets the USPTO know you have chosen a mark and want to protect it, but you still aren't ready to put it to use. An intent-to-use application will give you temporary trademark ownership benefits for six months.

If you haven't decided on your trademark yet, there are essentially two steps to consider. First, you want to find a trademark you can use publicly that identifies your goods or services while still being distinctive to set you apart from the rest. The good thing about distinctive marks is that they are given automatic protection without registration, so try to be as distinctive as possible.

You will also need to conduct your own trademark search to make sure the trademark isn't already in use by anyone else. If you find a similar trademark, you'll need to change your own until it's distinctive enough.

Frequently Asked Questions

A federal trademark registration lasts for 10 years. Unlike patents, however, trademark registrations can be renewed every so often for as long as you want.

  • How can I decide on my trademark?

There are two essential steps in deciding on your trademark. First, you need to find a mark that appeals to the public and also identifies your protect in a distinctive manner. Inherently distinctive marks also have the benefit of automatic trademark protection. Secondly, you should conduct a trademark search to make sure you're the first to use the mark.

  • What is a trademark search?

A trademark search allows you to look for any existing marks that could be confusingly similar to the one you wish to use. Hiring a trademark attorney to conduct the search is typically the best way to approach this crucial step. Without performing a comprehensive search, you run the risk of infringing on someone else's trademark and having to defend yourself in court. Any backlash from a lawsuit would mean having to change your mark, pay significant licensing fees, or destroying your entire inventory, so make sure you enlist professional help for performing the search.

Trademark dilution is a term referring to a trademark's weakening due to unauthorized use. Congress responded to trademark dilution under 15 U.S.C. 1125(c) (the federal trademark dilution statute). Under this statute, dilution applies to famous marks and doesn't require competition or likelihood of confusion to apply. The dilution statute even extends to parodies and satires in advertisements. 

  • Is there anything I can't trademark?

There are several trademarks not allowed by the USPTO. In addition to marks that would deceive or confuse customers, these include any mark that contrasts a law, contains obscene or scandalous matter, hurts any religious susceptibilities of a class or section, disentitles protection in a court of law, or is identical to a trademark already registered. You also cannot trademark a word of any chemical name, compound, or substance. Geographical names, surnames, personal names, and common abbreviations are also not up for trademarking. 

  • Should I register my trademark internationally?

You should register your trademark internationally if you think you will need it in certain countries. For instance, if you plan on franchising your restaurant and you know that one will be opened in Mexico, you will also want to register the trademark in Mexico. Keep in mind, though, that trademark laws vary in other countries. In some cases, the first person to apply for registration is given the trademark rather than the person who uses it.

Trademark infringement is when someone uses a similar trademark or illegally uses yours without permission, keeping your trademark safe.

  • Can I lose my trademark?

Yes, there are two ways you can lose your trademark. The first is through loss of usage. For example, "elevator" was trademarked at one time, but due to overuse, the word became generic and slipped into public domain.

The second way you can lose your trademark is through non-usage. You must continue to use the trademark properly or it will lose its distinctiveness. If you fail to use your business's trademark for two or more years, the trademark is considered abandoned.

Trademark searching is a complex but necessary step when creating your own trademark. You will need to uncover any similar marks that could cause confusion with customers. This is where a trademark attorney can help. You can search the web, domain names, company names, business directories, and the like, but a professional search will probably be more beneficial.

Steps to File

  1. To register your trademark, go to the United States Patent and Trademark Office's website.
  2. Make sure the trademark isn't already registered in the Trademark Electronic Search System database.
  3. Apply online and pay the trademark registration fee, which costs between $275 and $325.
  4. Get a response within six months of filing.

If you need help with your trademark registration, post a question on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of applications to the site, so our lawyers come from top schools such as Yale Law and Harvard Law.