Trademark Protection: Key Facts for Brand Owners
Trademark Law ResourcesTypes of TrademarksHow To Register A TrademarkTrademark InfringementProtect your brand with trademark protection. Learn about registration, enforcement, and types of trademarks to safeguard against infringement and counterfeiting. 8 min read updated on February 04, 2025
Key Takeaways:
- Trademark protection helps prevent unauthorized use and infringement.
- Registration with the USPTO offers strong legal benefits, but enforcement is the owner’s responsibility.
- Choosing a unique, creative trademark strengthens legal standing.
- Maintaining a trademark includes periodic renewal and monitoring for misuse.
- Both state and federal laws govern trademark protection, with the Lanham Act central to federal protections.
- Different types of trademarks (fanciful, arbitrary, descriptive) impact the level of protection.
- Trade dress and trademark infringement are important aspects of trademark law.
What Is Trademark Protection?
Trademark protection refers to safeguarding intellectual property rights to protect a trademark from counterfeiting and infringement. A trademark is an established or legally registered mark that identifies a manufacturer's unique goods and services. The owner of a distinctive mark can apply to receive trademark protection. However, trademark protection also requires you to continually use the mark in commerce.
To protect your trademark from infringement and counterfeiting, you need to make sure your mark is not used by others, and you need to bring legal charges against those who use your mark without permission. By conducting research, you can develop a strong trademark or service mark that other competitors will find it difficult to steal.
Once you start using your trademark, you will need to focus on your strategy for defense:
- Using the mark correctly and regularly
- Keeping a lookout for potential counterfeiting or infringement
- Taking action against those who don't respect your rights to the trademark
Benefits of Trademark Registration
Registering a trademark with the USPTO not only grants legal protection against infringement but also provides additional benefits such as:
- Public Notice: Registration on the Principal Register provides public notice of your ownership.
- Legal Presumptions: It establishes a legal presumption of ownership nationwide, which can be invaluable during litigation.
- Right to Sue in Federal Court: Registered trademark owners can take action against infringers in federal court.
- Customs Support: U.S. Customs and Border Protection can help prevent the import of goods that infringe on your trademark.
Trademark owners who actively enforce their rights maintain the integrity and reputation of their brand.
How to Choose a Strong Trademark
If you're launching a new business, product, or service, you should choose a trademark with the strongest legal status. For example, a generic term such as sandwiches can't be protected by a trademark. A descriptive name such as Speedy Bikes may be eligible for trademark registration, but you will need to make sure that no one has already registered that trademark.
You will receive strong protection for a trademark that creatively and indirectly suggests the nature of your business, products, or services. Some examples of good trademarks include the following:
- Blu-ray
- Coppertone
- Pasta Pomodoro
An arbitrary or fanciful trademark is one of the strongest types of trademarks eligible for protection. An example of an arbitrary mark is an English word used in a new context. For example, Apple is the name of a company that sells smartphones and computers. Blackberry refers to a mobile phone for business.
A fanciful mark is distinctive due to the use of fictitious names. You can find fanciful marks everywhere and in all industries. Some examples of fanciful marks include the following:
- Kodak
- Viagra
- Verizon
- Prozac
A good trademark is one that no one else is using already. You can use the U.S. Patent and Trademark Office (USPTO) website (uspto.gov) to do a search of all registered trademarks. However, you should keep in mind that you won't see common law trademarks. These trademarks get created following a series of rules governed by states, not federal governance. A business has the legal right to a common law trademark if it is the first to use it.
Before you attempt to register a new trademark, you want to make sure that you're not infringing on the trademark of another person. You can spend $100 to $400 for the services of a professional trademark search firm. You can count on such firms to do more thorough research for potential infringement. Another option is to have a trademark attorney conduct research for you.
Trademark Strength and Legal Protection
The strength of a trademark is crucial in determining its legal protection. Trademarks fall into several categories based on distinctiveness:
- Fanciful and Arbitrary Marks: Strongest protection; includes invented terms (e.g., Kodak) and real words used in unrelated contexts (e.g., Apple).
- Suggestive Marks: Moderate protection; suggest qualities of the product (e.g., Coppertone for sunscreen).
- Descriptive Marks: Limited protection unless secondary meaning is acquired (e.g., Holiday Inn).
- Generic Terms: No protection; common terms describing a category (e.g., "computer" for computers) cannot be trademarked.
Choosing a distinctive, strong mark can greatly improve legal protection and dependability against unauthorized use.
How to Maintain Your Trademark for Protection
Once you have a trademark through registration or common law use, you will need to take steps to protect the trademark.
- One of the best methods for protecting your trademark is simply using the mark regularly. Every five or 10 years, you will need to pay trademark renewal fees to the USPTO.
- You should also display the correct sign for your trademark. For example, you should display TM for a common law trademark and SM for a common law service mark. If your mark is federally registered, you should display the federally registered trademark symbol (®) on any marketing materials and products.
Keep in mind that you don't need to include the TM or registered trademark symbol each time you mention the name in your company. However, you should display the mark often, especially in the most prominent places, such as products and marketing materials. You will notice that corporations use registered trademark symbols about 50 percent of the time.
Include trademark language on all publications and packaging, including websites.
Trademark Enforcement Strategies
Trademark enforcement is the responsibility of the owner and may involve:
- Monitoring for Infringement: Regularly search for unauthorized use of your mark.
- Taking Action: Issue cease and desist letters or file lawsuits as needed.
- Educating the Public: Use trademark symbols (™ or ®) prominently to inform the public of your rights and deter unauthorized use.
Inconsistent or improper use of a trademark can weaken its protection, so owners must be vigilant in their defense strategies.
Trademark Protection Length
Once a trademark is successfully registered with the U.S. Patent and Trademark Office's Principal Register, the owner of the mark will receive a certificate. This certificate of registration is valid for 10 years. However, if the owner does not file a statement within five or six years of the mark's registration date, the trademark's registration may expire. The purpose behind this statement of use is to inform the USPTO that the mark is being used in commerce.
The owner of the mark can renew the original registration as many times as need for additional 10-year periods. Trademark owners need to complete their renewal applications and file them with the USPTO. If the owners fail to complete the renewal applications, all the special benefits of registration with the federal government will cease. However, the owners do not lose all rights to their marks.
Renewing and Managing Your Trademark
To retain federal protection, trademarks must be renewed periodically. After five years, trademark owners must submit a declaration of continued use, and full renewal occurs every 10 years. Failure to renew or properly use the trademark may result in loss of exclusive rights. Renewing through the USPTO ensures continued nationwide protection and access to federal legal benefits.
Steps to File
If you want to apply for trademark protection, you can file a trademark application with the U.S. Patent and Trademark Office (USPTO). You can go to uspto.gov to file the trademark application online. You can use the following guide for filing fees related to the trademark application:
- $225 for TEAS (Trademark Electronic Application System) Plus
- $275 for TEAS Reduced Fee (TEAS RF)
- $400 for TEAS Regular
Registration is fairly simple and straightforward for most trademark applications. In order to complete the application, you will need to do the following:
- Describe your service mark or trademark
- State when you first used the mark
- Describe the goods and services you intend to use the mark on
- Suggest the classification the mark should be registered under
When it comes to classifications, you'll find 40 different ones for products and services. You will be able to use the online help that the USPTO provides to determine which classification is most suitable for your mark.
You need to send your application with the following items:
- A representation of the mark (simply type the word for wordmarks and include a photo file of a graphic image for graphic marks)
- Samples of how you intend to use the mark
- Registration fee payment
You can have a trademark lawyer file a trademark application for you. As long as you offer all the information required, you will be able to receive a summary and confirmation of the trademark application filing.
Frequently Asked Questions
1. What is a trademark?
A trademark is any mark used to identify and distinguish products or services of a particular manufacturer. Trademarks can include words, symbols, and phrases. For instance, Nike’s name and swoosh logo help distinguish its products from those of other brands like Adidas. Trademarks create brand recognition and incentivize manufacturers to focus on quality.
2. What is trade dress?
Trade dress refers to characteristics of a product’s visual appearance that may qualify for trademark protection, such as color, shape, or packaging. For example, Coca-Cola’s distinct bottle shape serves as an identifier for the brand. However, features that give a functional advantage, like a grip-friendly bottle shape, cannot be trademarked as trade dress.
3. What laws regulate trademarks?
Both state and federal laws govern trademarks, with the Lanham Act serving as the primary federal statute for trademark protection. State common law also provides protection, though federal law typically offers broader, nationwide coverage.
4. Which marks qualify for trademark protection?
Marks must be distinctive to qualify for trademark protection. The four categories of distinctiveness include:
- Fanciful or Arbitrary (e.g., Apple, Kodak) - strongest protection
- Suggestive (e.g., Coppertone) - moderate protection
- Descriptive (e.g., Vision Center) - limited protection, requires secondary meaning
- Generic (e.g., "computer" for computers) - no protection
5. What are the differences between copyrights and trademarks?
While trademarks protect brand identifiers like logos and names, copyrights protect original works like music, art, and literature. Trademarks ensure consumers can identify product sources, whereas copyrights prevent unauthorized use of creative works.
6. How long does trademark protection last?
Trademark protection lasts indefinitely as long as it is actively used and renewed. Federal registration must be renewed every 10 years, with a declaration of continued use required after the first five years.
7. What is trademark infringement?
Trademark infringement occurs when another party’s use of a mark is likely to cause consumer confusion about the product's source. Courts consider factors like mark similarity, evidence of customer confusion, and the marketing channels used.
8. What is trademark dilution?
Trademark dilution applies when the use of a famous mark diminishes its uniqueness, even without causing confusion. Dilution can occur through blurring (associating the mark with unrelated products) or tarnishment (associating it with inferior or negative products). Famous marks like Kodak and Xerox are especially susceptible to dilution claims.
9. What are the benefits of registering a trademark on the USPTO’s Principal Register?
Registration on the Principal Register provides public notice of ownership, a presumption of nationwide ownership, and eligibility for federal court action. It also allows access to U.S. Customs and Border Protection support to prevent the import of infringing goods.
10. What is a generic mark?
A generic mark describes a general product category, like "computer" for computers, and is not eligible for trademark protection. If a brand name becomes generic over time, it may lose trademark rights.
11. What is a common law trademark?
A common law trademark arises from using a mark in commerce without federal registration. Common law trademarks provide local protection and are governed by state laws.
12. Can I protect my brand internationally?
Yes, you can apply for international protection through the Madrid Protocol, allowing registration in multiple countries with one application.
13. Do I need a lawyer to register a trademark?
While not required, a trademark lawyer can help ensure accurate registration, compliance, and effective enforcement of your rights.
Get Help With Trademark Application
If you need help with trademark protection, consider posting your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of all lawyers. Our lawyers come from Harvard Law, Yale Law, and other prestigious law schools, and have about 14 years of legal experience on average. Our lawyers have experience working with or on behalf of companies such as Menlo Ventures, Airbnb, and Google.