Trademark Rules: Everything You Need to KnowTrademark Law ResourcesTypes of TrademarksHow To Register A Trademark
Trademark rules established by the government dictate the proper usage of trademark trademarks identify products and services of manufacturers. 11 min read
What Are Trademark Rules?
Trademark rules established by federal and state governments dictate the proper usage of trademarks. A trademark refers to a word, phrase, or symbol used to identify the products and services of a certain manufacturer. Once a mark becomes registered or established through use, the trademark owner maintains certain rights over the mark's use.
Some possible consequences for not following trademark rules include fines, lawsuits, and the loss of special protections that the federal government grants to trademark owners.
What Are the Characteristics of a Trademark?
A trademark must have never been used to identify a class of products or services that you plan to put on the market.
A mark needs to stay distinctive for the federal or a state government to consider a trademark. Distinctiveness means that the mark can identify the manufacturer or seller of products or services. The courts assign a trademark to one of four categories to help gauge the distinctiveness of the mark:
- Arbitrary or fanciful
Each of the four categories differ in terms of their distinctiveness from the court's perspective. Therefore, the requirements for a trademark and the amount of legal protection that a trademark receives will depend on the category in which the trademark falls.
What Are the Trademark Rules for an Arbitrary or Fanciful Mark?
If a mark is fanciful or arbitrary, no logical connection exists between the mark and the underlying products and services.
- Some examples of fanciful and arbitrary marks include Apple, Kodak, and Exxon. No logical reason exists to explain why a company that sells computers, smartphones, and tablets chose the trademark Apple for its products. Another example of an arbitrary or fanciful mark is Nike and its swoosh logo. No logical connection exists between the swoosh mark and the athletic shoes that Nike sells.
The court views fanciful or arbitrary marks as distinctive. Therefore, the courts grant such marks significant protection under federal and state trademark rules and laws.
What Are the Trademark Rules for a Suggestive Mark?
A suggestive mark refers to a trademark or service mark that alludes to a certain characteristic of the product or service.
- One example of a suggestive mark is Coppertone. The word Coppertone does not describe the underlying product specifically. However, consumers can use their imaginations to understand the association between the mark and the underlying product. A suggestive mark is never entirely unrelated to the underlying product or service.
Just like a fanciful or arbitrary mark, the courts view a suggestive mark as being distinctive. Therefore, the courts grant suggestive marks a high level of protection.
What Are the Trademark Rules for a Descriptive Mark?
A descriptive mark refers to a trademark or service mark that describes the underlying product or service directly. Usually, a descriptive mark will directly refer to a quality or characteristic of a product.
- Some examples of descriptive marks include All Bran, Holiday Inn, and Vision Center. These marks describe characteristics of products. For example, the mark Holiday Inn alerts consumers to hotel room availability. Unlike suggestive, fanciful, or arbitrary marks, descriptive marks are not viewed as distinctive by the courts.
One trademark rule that the courts have established for descriptive marks is that the mark needs to have an established secondary meaning. The reason the courts require that descriptive marks fulfill this trademark rule is that descriptive marks often consist of terms useful for describing products and services. Therefore, to grant a manufacturer or seller exclusive rights for any descriptive mark could provide unfair advantages.
How Can a Descriptive Mark Acquire a Secondary Meaning?
According to the courts, a descriptive mark has gained a secondary meaning if consumers associate the mark with a certain manufacturer or seller than the product or service itself. For example, the descriptive term Holiday Inn has managed to gain a secondary meaning. Consumers associate the term Holiday Inn with a particular provider instead of any general provider of hotel services.
To decide whether a descriptive mark has acquired a secondary meaning, below are a few factors that courts will consider:
- The total volume of sales
- The approach and amount of advertising
- The results of any consumer surveys
- The nature and length of the term's usage
What Are the Trademark Rules for a Generic Mark?
A generic mark refers to a mark that broadly describes the category of the underlying product or service. An example of a generic mark would be Coffee for a company that sells coffee. The courts don't require outside individuals to follow any trademark rules when it comes to generic marks. Therefore, if a manufacturer or seller offers products or services under the Computer brand, that manufacturer would not be entitled to exclusive use of the term.
The courts don't offer trademark protections for generic marks because these terms are useful for describing and identifying a product or service. If a manufacturer or seller receives exclusive rights to a generic mark, this reception would likely put other manufacturers and sellers at a disadvantage. In some cases, a term that the courts consider distinctive can become generic with time. If this change occurs, the courts will refuse to afford trademark protection to the mark.
Why Are Trademark Rules Important?
Once a trademark gets registered with the federal or state government or established through use, the trademark can last forever. However, you need to follow a few rules to keep the lifetime of your trademark indefinite.
- To maintain trademark protections, you need to continue to use the mark in commerce.
- Before the end of the sixth year after registration of the mark, you need to complete and file an affidavit with the U.S. Patent and Trademark Office (USPTO).
- You also need to pay renewal fees for the trademark registration before the end of the 10th year after trademark registration.
- If you fail to renew your trademark, you will not lose the trademark, but you will lose registration rights. The main way you can lose your trademark rights is by not using the mark in commerce without expressing your intent to resume using the mark in the future, also called abandonment.
- Another way you can lose rights to your trademark is by licensing the trademark without any restrictions.
Protecting Your Trademark
To protect your trademark, you should register the trademark and mark your products and services with the federal trademark symbol. If you have not registered your trademark, you should mark your product with the TM trademark symbol. On the other hand, if you have registered your trademark, you can use the registered trademark (®) symbol.
You are not legally required to use these marks. However, using these marks will help deter trademark infringement. You will also have an easier time proving any infringements on your trademark if you use the marking.
When you discover a case of trademark infringement, you should send the person or business that infringed on your trademark a letter to cease and desist as soon as possible. If you give this notification, and the person or business continues to infringe upon your trademark, you will be able to prove infringement was intentional.
What Are the Trademark Rules for Use of the Federal Registration Symbol?
Federal law regulates uses for the registered trademark symbol. As stated above, no law exists that demands your use of this symbol. However, if you fail to use the federal registration symbol, you will forfeit your right to the recovery of money damages or lost profits.
In court, you will need to prove that a defendant knew you registered the mark with the federal government if you don't use the federal registration symbol. As you can imagine, this proof can be a real burden on you. The law places the burden on a defendant to know about the trademark registration if the mark's owner uses the federal registration symbol properly.
How Should the Trademark Symbols Be Used?
You should place the correct symbol in the upper right-hand corner of your mark in superscript text, if possible. If this placement is not possible, you can place the symbol in the lower right-hand corner of the mark. You should not place the symbol to the left, above, or below the mark. No trademark rules or laws regulate trademark symbol placement. However, you should best follow these guidelines to make sure you use the trademark symbol effectively.
In a written document, you only need to use the trademark symbol with the first appearance of the trademark or service mark. Some examples of these written documents include:
- Promotional materials
- Press releases
- Blog posts
You can also choose to use the symbol with the mark's most prominent placement in the text. A common misconception is that one needs to have a symbol with all instances of the mark. If you overuse the symbol, the overuse can negatively impact the aesthetic appeal of your marketing piece.
What Are Trademark Rules for Registration?
Even though you can have your trademark registered with the USPTO, trademark registration is not necessary for protection.
However, if you choose not to register your trademark, you will receive protection for the trademark only in the geographical areas where you use the trademark. Also, you won't be able to file a lawsuit for infringement in federal courts. However, trademark registration enables you to enjoy access to federal courts and nationwide protection for your trademark.
Trademark Rules for Litigation
If a dispute arises over the ownership of a trademark, the courts will rule in favor of the individual or company that used the mark in commerce first. This reality is true even when another person or business was the first to register the trademark with the federal government.
If a dispute arises over whether the defendant's use of the trademark qualifies as infringement, the results will depend on whether the actions of the defendant could reasonably cause consumer confusion between your product and a defendant's product. If you have a notable trademark, you could put the courts in your favor by showing that the defendant's use of the mark could tarnish your trademark's reputation.
What Shouldn't You Do With Trademarks?
- Don't use your trademark as a noun. Rather, use your trademark as an adjective. Follow up the trademark with a noun. For example, Apple computer.
- Don't use your trademark in the possessive form. The only exception to this trademark rule is if the trademark is possessive.
- Don't make your trademark plural. Instead, you should make the common noun accompanying the trademark plural. For example, Dell computers.
- Don't use your trademark as a verb.
Following these rules for trademark usage will help prevent your trademark from becoming a generic term. If your trademark becomes a generic term, you could lose your trademark protections.
When you use a text mark, be sure that you display the mark in a way that sets it apart from the rest of the text. For example, you could put the text mark in italics or capital letters. This appearance will show your consumers that the text is not a common descriptor but a brand name.
Before you start using a trademark or business name , you should conduct research to make sure you're not breaking any trademark rules. You don't want to find out that someone else owns your mark after you use it to sell your products and services.
You can search a computerized database to make sure that your trademark is completely different. You can use these databases for free or at a reasonable cost. You can also pay an online service or a lawyer to do the research for you if you don't have the time to do the research yourself.
You don't want to confuse consumers and make them believe that a relationship exists between your company and an outside company or individual based on similarities of your logo, trademark, or business name.
You also don't want to face a lawsuit for trademark infringement or dilution. A trademark lawyer will be able to tell you whether the trademark you select would likely lead to confusion among your consumers.
Frequently Asked Questions
- What sources of law govern trademarks?
Both state and federal laws determine trademark rules. State common law was primarily the main source of trademark rules. However, the U.S. Congress passed a federal trademark law in the late 1800s. Since this federal trademark law passed, Congress has expanded it over time to cover much of state common law covered.
The main federal statute for trademarks is the Lanham Act. Passed in 1946, this law was amended in 1996. The Lanham Act offers the most level of trademark protection. However, trademark protection is still available under state common law.
- How can you acquire rights for a trademark?
If your trademark qualifies for protection, you can get rights for your trademark in two ways:
- Be the first to use the mark to identify your products and services in commerce.
- Be the first to register the trademark with the USPTO.
However, keep in mind that a descriptive mark needs secondary meaning to qualify for protection and registration. Therefore, you need to be the first to use a descriptive mark in commerce. Before the descriptive mark acquires secondary meaning, the descriptive mark likely won't qualify for trademark protection. Using a mark in commerce refers to the sale of a product or service to consumers with the mark printed on the product or service.
Another way you can acquire rights for a trademark with the USPTO is to express your intentions to use the mark in commerce in the future. If you register the mark with the USPTO, you will have the right to use the trademark anywhere in the United States. This case is true even if sales of the product or service get limited to a specific geographic area. However, if others are already using the mark in a certain geographic area, this right will be limited.
- What is trademark infringement?
If you have the rights to a certain trademark, you can sue others for trademark infringement. The standard for trademark infringement is likelihood of confusion. A party commits trademark infringement if the use of a mark is likely to lead to consumer confusion when it connected with manufacturers or sellers of products.
To decide whether customer confusion is likely, some of the factors that the courts will look at include:
- Similarity of products
- Similarity of marks
- Distinctiveness of the marks
- Evidence of consumer confusion
- Defendant intent
- Amount of caution the average purchaser will take
- Similarity of marketing methods
A clear example of trademark infringement is if some business or company uses your mark without making any changes to the same product or service. This rule explains why you can't manufacture and sell your own brand of computers, smartphones, and tablets under the Apple brand.
You also can't sell these products under a mark that is too similar to the trademark Apple. Therefore, Apricot and Applet are prohibited trademarks for computers. However, you can use the same term for the trademark of a product or service that is completely unrelated. The same trademark for entirely different products and services is unlikely to cause consumer confusion in this case.
- What is trademark dilution?
Not only can you accuse a business or individual of trademark infringement, but you can also accuse others of trademark dilution. You can file a lawsuit for trademark dilution under state or federal law. A trademark dilution claim under federal law is possible only if your mark is notable or famous. Otherwise, you will need to file the trademark dilution claim under state law.
To decide whether your mark is notable or famous, the courts will consider the following factors:
- Inherent distinctiveness of the mark
- Acquired distinctiveness of the mark
- The mark's channels of trade
- The extent and duration of use of the mark
- The degree of publicity and advertising
- The geographic limits of the market
- The extent of recognition of the mark in the market
- Registration status of the mark
- Use of the same or similar mark by other people or businesses
Under state law, you need to meet only two requirements to file a claim for trademark dilution. These two requirements are as follows:
- The two marks are very similar
- The mark possesses a distinctive quality
Get Help With Understanding Trademark Rules
If you need help understanding trademark rules, you can post your question or concern 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 such as Google, Stripe, and Twilio.