Trademark Protection: Everything You Need to KnowTrademark Law ResourcesTypes of TrademarksHow To Register A TrademarkTrademark Infringement
Trademark protection refers to safeguarding intellectual property rights to protect a trademark from counterfeiting and infringement.11 min read
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 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
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:
- 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:
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.
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 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.
Frequently Asked Questions
- What is a trademark?
Trademark refers to any mark used to identify and distinguish products or services of a particular manufacturer. Trademarks can include:
A good example of a trademark is Nike and the well-known Nike swoosh. Both the name of the brand and the logo help distinguish the shoes produced by Nike from the shoes produced by other companies, such as Adidas and Reebok. Another example of an effective trademark is Coca-Cola.
If you use a mark to identify a service, not a product, then the mark is a service mark. However, service marks get treated the same as traditional trademarks for trademark protection.
A trademark enables a consumer to easily identify the source of a product. Trademarks also give manufacturers an incentive to emphasize production of quality products. Trademark law regulates the proper usage of trademarks.
- What is trade dress?
In some cases, trademark protection can go further than symbols, words, and phrases. Some examples of aspects of a product that can receive trademark protection include color and packaging. For example, a Coca-Coca bottle has a distinctive shape that can serve as an identifying feature for the brand. These features are trade dress.
If consumers tend to associate a certain feature with a brand and not the type of product, trade dress may apply. However, these features will not receive trademark protection if they offer a competitive or functional advantage over other products. For example, if a unique bottle shape makes the product easier to grip, this feature cannot receive trademark protection.
- What laws regulate trademarks?
Both state and federal laws govern trademarks. In the past, state common law served as the main source of trademark protection. However, in the late 19th century, Congress passed the first federal trademark law. Over time, federal laws for trademark protections have expanded. Now, federal laws are the main source of trademark protection.
In 1946, the Lanham Act became the main federal statute for trademark protection. In 1996, the Lanham Act was amended. State common laws are still available for those seeking trademark protection, but federal law remains the best source for nationwide trademark protection.
- Which marks qualify for trademark protection?
For a mark to qualify for trademark protection, it needs to be distinctive. In other words, the mark needs to be capable of identifying the manufacturer of a particular product or service. Courts consider four categories to determine whether a mark is distinctive:
- Arbitrary or Fanciful
The marks in each of these four categories vary in terms of distinctiveness. Therefore, the extent of protection that a trademark receives will rely on the category the mark encompasses.
- What is a fanciful or arbitrary mark?
A fanciful or arbitrary mark refers to a mark that has no logical relationship to the products or services. Some examples of such marks include Apple, Exxon, and Kodak. Apple is a company that sells computers; no logical relationship exists between computers and apples. A mark that is fanciful or arbitrary is inherently distinctive. Therefore, such marks receive trademark protection to the greatest extent.
- What is a suggestive mark?
If a mark is suggestive, then it suggests or evokes a characteristic of the product or service. Coppertone is an example of a suggestive trademark. While Coppertone does not specifically describe sunscreen, the name is suggestive of the product. In general, if you need to use your imagination to associate a product with a mark, the mark can be considered suggestive. Suggestive marks also receive significant trademark protection because they are inherently distinctive.
- What is a descriptive mark?
A descriptive mark refers to a mark that describes, not suggests, a quality or characteristic of a product or service. Some examples of such marks include Vision Center, Holiday Inn, and All Bran. A descriptive mark will tell you about a certain aspect of the product or service.
Courts don't consider descriptive marks to be inherently distinctive. The only way a descriptive mark can receive trademark protection is if the mark has acquired a secondary meaning. Descriptive marks need to meet this requirement because such marks usually include marks that are useful for description of the product or service. Therefore, granting a manufacturer exclusive right to a descriptive mark could give the manufacturer unfair advantages.
If consumers associate a mark with a manufacturer or producer instead of the product or service, the descriptive mark has acquired a qualifying secondary meaning.
For example, Holiday Inn is a trademark that has managed to acquire a secondary meaning. Consumers usually associate the term Holiday Inn with a specific provider of hotel services, not any other hotel services. Consumers don't need to be able to identify the particular producer. However, producers need to know that the product or service only comes from one producer. To determine whether a descriptive trademark has acquired a secondary meaning, the courts will look at the following:
- The volume of sales
- The manner and length of the term's use
- Consumer survey results
- The method and amount of advertising
- What is a generic mark?
A generic mark refers to a mark that describes the product or service's general category. For example, the term computer would be an example of a generic mark. Under trademark law, generic marks are not entitled to receive any protection. Therefore, if a manufacturer is selling Camera brand cameras, the manufacturer would have no exclusive rights to the brand name.
Generic terms are useful for describing a product. Therefore, trademark law does not extend trademark protection to generic terms. If a single manufacturer has control over a generic term, that control would grant them an advantage. In some cases, a term that was not considered generic can change to become generic with time. In such circumstances, the term loses its right to trademark protection.
- What is the difference between copyrights and trademarks?
A frequent misconception is that copyrights and trademarks are the same. However, trademarks and copyrights offer different protections. Trademark laws are responsible for protecting short phrases, names, and titles that help identify the source of the product or service. On the other hand, copyright refers to the legal right established by law that grants an original work's creator the exclusive rights for the use and distribution of that work.
- What is trademark infringement?
A party that possesses rights to a certain trademark can sue other parties for trademark infringement. Likelihood of confusion determines whether someone can sue another business or individual for trademark infringement. If another person's use of a trademark to sell a product or service is likely to lead to consumer confusion related to the source of the product or service, then the individual has likely committed trademark infringement.
Some of the factors that the courts will consider when determining whether consumers may be confused include:
- The mark's strength
- Proximity of the mark to products
- Similarity of the two marks
- Existing evidence of customer confusion
- The amount of caution the typical purchaser will exercise
- Similarity of the marketing channels used
- Intent of the defendant
An example of trademark infringement is if another company uses an identical mark on the same product or service. If one attempts to sell manufactured computers under the Apple brand, this attempt would likely cause customer confusion. Many customers would likely believe that they are purchasing computers produced by Apple Inc. Therefore, using the Apple mark exactly would likely lead to the claim of trademark infringement. The marks would need to be similar enough in meaning, appearance, and sound to cause consumer confusion.
Some other examples of trademark infringement include using the mark Apricot or Applet for computers. However, if you use the same term for a product that is completely unrelated, you will not be accused of trademark infringement. For example, Apple Inc. and Apple Records can exist because consumers will be able to easily distinguish between the two companies.
- What is trademark dilution?
The owner of a trademark can also accuse another person or company of trademark dilution under state or federal law. A dilution claim under federal law is only possible if the mark is a well-known mark. In order to determine whether a mark is famous, the courts will consider the following factors:
- Extent of acquired or inherent distinctiveness
- The extent and duration of use
- The amount of publicity and advertising
- The market's geographic extent
- The channels and methods of trade
- Extent of recognition
- The infringing person or company's use of similar marks
- The registration status of the mark
Some examples of famous marks are Exxon, Kodak, and Xerox. Under state law, fame is not necessary for a trademark owner to make a trademark dilution claim. The requirements for a dilution claim under state law are as follows:
- Similarity of the two marks
- The distinctive quality or selling power of the mark
If the prerequisites for a dilution claim under federal or state law are met, the trademark owner can bring action against all use of the mark that hinders the mark's distinctive quality. The mark must be tarnished or blurred due to these actions.
Blurring occurs if the mark's power gets hindered by associating the brand with completely unrelated goods. For example, Kodak brand clothing would be an example of trademark dilution. While this example likely won't cause consumer confusion, this use will dilute the mark's distinctive quality.
Tarnishment refers to portraying the mark in a negative light. Tarnishment usually occurs when the mark gets associated with unseemly or inferior goods or services. For example, Toys R Us filed an infringement lawsuit against a pornographic website called Adults R Us.
- What are the benefits of registering a trademark using the USPTO's Principal Register?
Registering a trademark on the Principal Register enables people to receive the full value of federal trademark protection. The most important benefit is that anyone who may infringe on a trademark may be labeled by the courts as a willful infringer. Registration on the Supplemental Register doesn't offer evidence of an owner's exclusive right to use a trademark in connection with a product or service. Additionally, owners of trademarks on the Supplemental Register can't use customs services to stop imports on products that infringe upon their trademarks.
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 word marks 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.
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 Stripe, Twilio, and Google.